Proposal for a Council Regulation on the Community trade mark (Codified version)
Date: 2006-12-19
Institutions: European Commission
Subjects: EU trade mark, codification of EU law, simplification of legislation, trade-mark law

COMMISSION OF THE EUROPEAN COMMUNITIES 

Brussels, 19.12.2006 
COM(2006) 830 final 

2006/0267 (CNS) 

Proposal for a 

COUNCIL REGULATION 

on the Community trade mark 

(Codified version) 

(presented by the Commission) 

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EXPLANATORY MEMORANDUM 

In  the  context  of  a  people’s  Europe,  the  Commission  attaches  great  importance  to 
simplifying  and  clarifying  Community  law  so  as  to  make  it  clearer  and  more 
accessible to the ordinary citizen, thus giving him new opportunities and the chance 
to make use of the specific rights it gives him. 

This aim cannot be achieved so long as numerous provisions that have been amended 
several times, often quite substantially, remain scattered, so that they must be sought 
partly  in  the  original  instrument  and  partly  in  later  amending  ones.  Considerable 
research work, comparing many different instruments, is thus needed to identify the 
current rules. 

For  this  reason  a  codification  of  rules  that  have  frequently  been  amended  is  also 
essential if Community law is to be clear and transparent. 

On  1  April  1987  the  Commission  therefore  decided1  to  instruct  its  staff  that  all 
legislative acts should be codified after no more than ten amendments, stressing that 
this  is  a  minimum  requirement  and  that  departments  should  endeavour  to  codify  at 
even  shorter  intervals  the  texts  for  which  they  are  responsible,  to  ensure  that  the 
Community rules are clear and readily understandable. 

The  Conclusions  of 
the  Edinburgh  European  Council 
(December 1992) confirmed this2, stressing the importance of codification as it offers 
certainty as to the law applicable to a given matter at a given time. 

the  Presidency  of 

Codification  must  be  undertaken  in  full  compliance  with  the  normal  Community 
legislative procedure. 

Given  that  no  changes  of  substance  may  be  made  to  the  instruments  affected  by 
codification, the European Parliament, the Council and the Commission have agreed, 
by  an  interinstitutional  agreement  dated  20  December  1994,  that  an  accelerated 
procedure may be used for the fast-track adoption of codification instruments. 

is 

this  proposal 

to  undertake  a  codification  of  Council 
The  purpose  of 
Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark3. The 
new Regulation will supersede the various acts incorporated in it4; this proposal fully 
preserves  the  content  of  the  acts  being  codified  and  hence  does  no  more  than 
bringing  them  together  with  only  such  formal  amendments  as  are  required  by  the 
codification exercise itself. 

COM(87) 868 PV. 
See Annex 3 to Part A of the Conclusions. 
Carried out pursuant to the Communication from the Commission to the European Parliament and the 
Council – Codification of the Acquis communautaire, COM(2001) 645 final. 
See Annex I to this proposal. 

1. 

2. 

3. 

4. 

1 
2 
3 

4 

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5. 

The codification proposal was drawn up on the basis of a preliminary consolidation, 
in all official languages, of Regulation (EC) No 40/94 and the instruments amending 
it, carried out by the Office for Official Publications of the European Communities, 
by  means  of  a  data-processing  system.  Where  the  Articles  have  been  given  new 
numbers,  the  correlation  between  the  old  and  the  new  numbers  is  shown  in  a  table 
contained in Annex II to the codified Regulation. 

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(cid:208) 40/94 (adapted) 

2006/0267 (CNS) 

Proposal for a 

COUNCIL REGULATION 

on the Community trade mark 

(Text with EEA relevance) 

THE COUNCIL OF THE EUROPEAN UNION, 

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

Having regard to the proposal from the Commission, 

Having regard to the opinion of the European Parliament5, 

Having regard to the opinion of the European Economic and Social Committee6, 

Whereas: 

(1) 

Council  Regulation (EC) No 40/94  of  20  December  1993  on  the  Community  trade 
mark7  has  been  substantially  amended  several  times8.  In  the  interests  of  clarity  and 
rationality the said Regulation should be codified. 

(cid:208)  

(cid:208) 40/94 Recital 1 

(2) 

It  is  desirable  to  promote  throughout  the  Community  a  harmonious  development  of 
economic  activities  and  a  continuous  and  balanced  expansion  by  completing  an 
internal  market  which  functions  properly  and  offers  conditions  which  are  similar  to 
those obtaining in a national market. In order to create a market of this kind and make 
it increasingly a single market, not only must barriers to free movement of goods and 
services be removed and arrangements be instituted which ensure that competition is 
not  distorted,  but,  in  addition,  legal  conditions  must  be  created  which  enable 
undertakings  to  adapt  their  activities  to  the  scale  of  the  Community,  whether  in 
manufacturing  and  distributing  goods  or  in  providing  services.  For  those  purposes, 

5 
6 
7 

8 

OJ C […], […], p. […]. 
OJ C […], […], p. […]. 
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). 
See Annex I. 

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trade marks enabling the products and services of undertakings to be distinguished by 
identical  means  throughout  the  entire  Community,  regardless  of  frontiers,  should 
feature amongst the legal instruments which undertakings have at their disposal. 

(cid:208) 40/94 Recital 2 (adapted) 

(3) 

For  the  purpose  of  ⌦ pursuing ⌫  the  Community's  said  objectives  ⌦ it  would 
appear necessary to provide for ⌫ Community arrangements for trade marks whereby 
undertakings can by means of one procedural system obtain Community trade marks 
to  which  uniform  protection  is  given  and  which  produce  their  effects  throughout  the 
entire area of the Community. The principle of the unitary character of the Community 
trade  mark  thus  stated  ⌦ should ⌫  apply  unless  otherwise  provided  for  in  this 
Regulation. 

(cid:208) 40/94 Recital 3 (adapted) 

(4) 

The barrier of territoriality of the rights conferred on proprietors of trade marks by the 
laws of the Member States cannot be removed by approximation of laws. In order to 
open up unrestricted economic activity in the whole of the ⌦ internal ⌫ market for 
the benefit of undertakings, trade marks ⌦ should ⌫ be created which are governed 
by a uniform Community law directly applicable in all Member States. 

(5) 

Since  the  Treaty  has  not  provided  the  specific  powers  to  establish  such  a  legal 
instrument, Article ⌦ 308 ⌫ of the Treaty should be applied. 

(cid:208) 40/94 Recital 4 (adapted) 

(cid:208) 40/94 Recital 5 

(6) 

The Community law relating to trade marks nevertheless does not replace the laws of 
the Member States on trade marks. It would not in fact appear to be justified to require 
undertakings to apply for registration of their trade marks as Community trade marks. 
National  trade  marks  continue  to  be  necessary  for  those  undertakings  which  do  not 
want protection of their trade marks at Community level. 

(7) 

The rights in a Community trade mark ⌦ should ⌫ not be obtained otherwise than 
by  registration,  and  registration  ⌦ should ⌫  be  refused  in  particular  if  the  trade 
mark is not distinctive, if it is unlawful or if it conflicts with earlier rights. 

(cid:208) 40/94 Recital 6 (adapted) 

(cid:208) 40/94 Recital 7 (adapted) 

(8) 

The  protection  afforded  by  a  Community  trade  mark,  the  function  of  which  is  in 
particular  to  guarantee  the  trade  mark  as  an  indication  of  origin,  ⌦ should  be ⌫ 
absolute  in  the  case  of  identity  between  the  mark  and  the  sign  and  the  goods  or 
services.  The  protection  ⌦ should  apply ⌫  also  in  cases  of  similarity  between  the 
mark and the sign and the goods or services. An interpretation should be given of the 
concept  of  similarity  in  relation  to  the  likelihood  of  confusion.  The  likelihood  of 

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confusion, the appreciation of which depends on numerous elements and, in particular, 
on the recognition of the trade mark on the market, the association which can be made 
with the used or registered sign, the degree of similarity between the trade mark and 
the  sign  and  between  the  goods  or  services  identified,  ⌦ should  constitute ⌫  the 
specific condition for such protection. 

(cid:208) 40/94 Recital 8 (adapted) 

(9) 

It follows from the principle of free ⌦ movement ⌫ of goods that the proprietor of a 
Community  trade  mark  must  not  be  entitled  to  prohibit  its  use  by  a  third  party  in 
relation  to  goods  which  have  been  put  into  circulation  in  the  Community,  under  the 
trade mark, by him or with his consent, save where there exist legitimate reasons for 
the proprietor to oppose further commercialisation of the goods. 

(10)  There  is  no  justification  for  protecting  Community  trade  marks  or,  as  against  them, 
any trade mark which has been registered before them, except where the trade marks 
are actually used. 

(cid:208) 40/94 Recital 9 

(cid:208) 40/94 Recital 10 (adapted) 

(11)  A  Community  trade  mark  is  to  be  regarded  as  an  object  of  property  which  exists 
separately  from  the  undertakings  whose  goods  or  services  are  designated  by  it. 
Accordingly,  it  ⌦ should ⌫  be  capable  of  being  transferred,  subject  to  the 
overriding  need  to  prevent  the  public  being  misled  as  a  result  of  the  transfer.  It 
⌦ should ⌫ also be capable of being charged as security in favour of a third party 
and of being the subject matter of licences. 

(cid:208) 40/94 Recital 11 (adapted) 

(12)  Administrative  measures  are  necessary  at  Community  level  for  implementing  in 
relation  to  every  trade  mark  the  trade  mark  law  created  by  this  Regulation.  It  is 
therefore essential, while retaining the Community's existing institutional structure and 
balance of powers, to ⌦ provide for ⌫ an Office for Harmonisation in the Internal 
Market (trade marks and designs) which is independent in relation to technical matters 
and has legal, administrative and financial autonomy. To this end it is necessary and 
appropriate that ⌦ that Office ⌫ should be a body of the Community  having legal 
personality and exercising the implementing powers which are conferred on it by this 
Regulation,  and  that  it  should  operate  within  the  framework  of  Community  law 
without detracting from the competencies exercised by the Community institutions. 

(cid:208) 40/94 Recital 12 

(13) 

It is necessary to ensure that parties who are affected by decisions made by the Office 
are protected by the law in a manner which is suited to the special character of trade 
mark  law.  To  that  end  provision  is  made  for  an  appeal  to  lie  from  decisions  of  the 
examiners and of the various divisions of the Office. If the department whose decision 
is contested does not rectify its decision it is to remit the appeal to a Board of Appeal 

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of the Office, which is to decide on it. Decisions of the Boards of Appeal are, in turn, 
amenable to actions before the Court of Justice of the European Communities, which 
has jurisdiction to annul or to alter the contested decision. 

(cid:208) 40/94 Recital 13 (adapted) 

(14)  Under ⌦ the  first subparagraph of  Article  225(1)  of  the  EC  Treaty  the ⌫ Court of 
First  Instance  of  the  European  Communities  ⌦ has  jurisdiction  to  hear  and 
determine ⌫  at  first  instance  ⌦ the  actions  referred  to  in  particular  in ⌫ 
Article ⌦ 230 ⌫  of  the  EC  Treaty  ⌦ with  the  exception  of  those  assigned  to  a 
judicial  panel  and  those  reserved  in  the  Statute  to  the  Court  of  Justice. ⌫  The 
jurisdiction  which  this  Regulation  confers  on  the  Court  of  Justice  to  cancel  and 
⌦ alter ⌫ decisions of the ⌦ Boards of Appeal should ⌫ accordingly be exercised 
at first instance by the Court. 

(15) 

In  order  to  strengthen  the  protection  of  Community  trade  marks  the  Member  States 
should designate, having regard to their own national system, as limited a number as 
possible of national courts of first and second instance having jurisdiction in matters of 
infringement and validity of Community trade marks. 

(cid:208) 40/94 Recital 14 

(cid:208) 40/94 Recital 15 (adapted) 

(16)  Decisions  regarding  the  validity  and  infringement  of  Community  trade  marks  must 
have  effect  and  cover  the  entire  area  of  the  Community,  as  this  is  the  only  way  of 
preventing  inconsistent  decisions  on  the  part  of  the  courts  and  the  Office  and  of 
ensuring that the unitary character of Community trade marks is not undermined. [The 
⌦ provisions  of  Council  Regulation  (EC)  No  44/2001  of  22  December  2000  on 
jurisdiction and the recognition and enforcement of judgments in civil and commercial 
matters9 should ⌫ apply to all actions at law relating to Community trade marks, save 
where this Regulation derogates from those rules.] 

(cid:208) 40/94 Recital 16 (adapted) 

(17)  Contradictory judgments should be avoided in actions which involve the same acts and 
the same parties and which are brought on the basis of a Community trade mark and 
parallel  national  trade  marks.  For  this  purpose,  when  the  actions  are  brought  in  the 
same Member State, the way in which this is to be achieved is a matter for national 
procedural rules, which are not prejudiced by this Regulation, whilst when the actions 
are  brought  in  different  Member  States,  provisions  modelled  on  the  rules  on  lis 
pendens  and  related  actions  of  ⌦ Regulation  (EC)  No  44/2001 ⌫  appear 
appropriate. 

9 

OJ L 12, 16.1.2001, p. 1. Regulation as last amended by agreement between the European Community 
and the Kingdom of Denmark on jurisdiction and the recognition and enforcement of judgments in civil 
and commercial matters. 

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(cid:208) 40/94 Recital 17 

(18) 

In  order  to  guarantee  the  full  autonomy  and  independence  of  the  Office,  it  is 
considered  necessary  to  grant  it  an  autonomous  budget  whose  revenue  comes 
principally  from  fees  paid  by  the  users  of  the  system.  However,  the  Community 
budgetary  procedure  remains  applicable  as  far  as  any  subsidies  chargeable  to  the 
general budget of the European Communities are concerned. Moreover, the auditing of 
accounts should be undertaken by the Court of Auditors. 

(cid:208) 40/94 Recital 18 (adapted) 

(19)  ⌦ Measures  necessary  for  the  implementation  of  this  Regulation  should  be 
adopted ⌫, particularly as regards fees regulations and an Implementing Regulation, 
⌦ in accordance with Council Decision  1999/468/EC of 28 June 1999 laying down 
the 
the  procedures  for 
Commission10 ⌫, 

implementing  powers  conferred  on 

the  exercise  of 

HAS ADOPTED THIS REGULATION: 

(cid:208) 40/94 

TITLE I 

GENERAL PROVISIONS 

Article 1 

Community trade mark 

1. A trade mark for goods or services which is registered in accordance with the conditions 
contained in this Regulation and in the manner herein provided is hereinafter referred to as a 
‘Community trade mark’. 

2.  A  Community  trade  mark  shall  have  a  unitary  character.  It  shall  have  equal  effect 
throughout  the  Community:  it  shall  not  be  registered,  transferred  or  surrendered  or  be  the 
subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its 
use be prohibited, save in respect of the whole Community. This principle shall apply unless 
otherwise provided in this Regulation. 

10 

OJ L 184, 17.7.1999, p. 23. Decision as last amended by Decision 2006/512/EC (OJ L 200, 22.7.2006, 
p. 11). 

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Article 2 

Office 

An  Office  for  Harmonisation  in  the  Internal  Market  (trade  marks  and  designs),  hereinafter 
referred to as ‘the Office’, is hereby established. 

Article 3 

Capacity to act 

For the purpose of implementing this Regulation, companies or firms and other legal bodies 
shall be regarded as legal persons if, under the terms of the law governing them, they have the 
capacity in their own name to have rights and obligations of all kinds, to make contracts or 
accomplish other legal acts and to sue and be sued. 

TITLE II 

THE LAW RELATING TO TRADE MARKS 

SECTION 1 

DEFINITION OF A COMMUNITY TRADE MARK AND OBTAINING A 
COMMUNITY TRADE MARK 

Article 4 

Signs of which a Community trade mark may consist 

A Community trade mark may consist of any signs capable of being represented graphically, 
particularly words, including personal names, designs, letters, numerals, the shape of goods or 
of  their  packaging,  provided  that  such  signs  are  capable  of  distinguishing  the  goods  or 
services of one undertaking from those of other undertakings. 

(cid:208) 422/2004 Art. 1 pt. 1 

Article 5 

Persons who can be proprietors of Community trade marks 

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

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(cid:208) 40/94 (adapted) 

Article 6 

Means whereby a Community trade mark is obtained 

A Community trade mark shall be obtained by registration. 

Article 7 

Absolute grounds for refusal 

1. The following shall not be registered: 

(a) 

(b) 

(c) 

(d) 

signs which do not conform to the requirements of Article 4; 

trade marks which are devoid of any distinctive character; 

trade  marks  which  consist  exclusively  of  signs  or  indications  which  may  serve,  in 
trade, to designate the kind, quality, quantity, intended purpose, value, geographical 
origin or the time of production of the goods or of rendering of the service, or other 
characteristics of the goods or service; 

trade  marks  which  consist  exclusively  of  signs  or  indications  which  have  become 
customary in the current language or in the bona fide and established practices of the 
trade; 

(e) 

signs which consist exclusively of: 

(i) 

the shape which results from the nature of the goods themselves; 

(ii) 

the shape of goods which is necessary to obtain a technical result;  

(iii) 

the shape which gives substantial value to the goods; 

(f) 

(g) 

(h) 

(i) 

trade marks which are contrary to public policy or to accepted principles of morality; 

trade marks which are of such a nature as to deceive the public, for instance as to the 
nature, quality or geographical origin of the goods or service; 

trade marks which have not been authorised by the competent authorities and are to 
be refused pursuant to Article 6ter of the ⌦ Paris Convention for the Protection of 
Industrial Property, hereinafter referred to as the “Paris Convention” ⌫; 

trade marks which include badges, emblems or escutcheons other than those covered 
by  Article  6ter  of  the  Paris  Convention  and  which  are  of  particular  public  interest, 
unless  the  consent  of  the  ⌦ competent  authority ⌫  to  their  registration  has  been 
given; 

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(j) 

(k) 

trade  marks  for  wines  which  contain  or  consist  of  a  geographical  indication 
identifying wines or for spirits which contain or consist of a geographical indication 
identifying spirits with respect to such wines or spirits not having that origin; 

(cid:208) 3288/94 Art. 1 pt. 3 

(cid:208) 422/2004 Art. 1 pt. 2 (adapted) 

trade  marks  which  contain  or  consist  of  a  designation  of  origin  or  a  geographical 
in  accordance  with  ⌦ Council ⌫  Regulation  (EEC) 
indication  registered 
No 2081/92  ⌦ 11 ⌫  when  they  correspond  to  one  of  the  situations  covered  by 
Article  13  of  the  said  Regulation  and  regarding  the  same  type  of  product,  on 
condition  that  the  application  for  registration  of  the  trade  mark  has  been  submitted 
after the date of filing with the Commission of the application for registration of the 
designation of origin or geographical indication. 

(cid:208) 40/94 (adapted) 

2.  Paragraph  1  shall  apply  notwithstanding  that  the  grounds  of  non-registrability  obtain  in 
only part of the Community. 

3.  Paragraph  1(b),  (c)  and  (d)  shall  not  apply  if  the  trade  mark  has  become  distinctive  in 
relation to the goods or services for which registration is requested in consequence of the use 
which has been made of it. 

Article 8 

Relative grounds for refusal 

1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall 
not be registered: 

(a) 

(b) 

if  it  is  identical  with  the  earlier  trade  mark  and  the  goods  or  services  for  which 
registration  is  applied  for  are  identical  with  the  goods  or  services  for  which  the 
earlier trade mark is protected; 

if because of its identity with, or similarity to, the earlier trade mark and the identity 
or  similarity  of  the  goods  or  services  covered  by  the  trade  marks  there  exists  a 
likelihood of confusion on the part of the public in the territory in which the earlier 
trade  mark  is  protected;  the  likelihood  of  confusion  includes  the  likelihood  of 
association with the earlier trade mark. 

2. For the purposes of paragraph 1, ‘earlier trade marks’ means: 

(a) 

trade marks of the following kinds with a date of application for registration which is 
earlier  than  the  date  of  application  for  registration  of  the  Community  trade  mark, 

11 

OJ L 208, 24.7.1992, p. 1. 

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taking account, where appropriate, of the priorities claimed in respect of those trade 
marks: 

(i)  Community trade marks; 

(ii) 

trade  marks  registered  in  a  Member  State,  or,  in  the  case  of  Belgium,  the 
Netherlands  or  Luxembourg,  at  the  ⌦ Benelux  Office  for  Intellectual 
Property ⌫; 

(iii) 

trade marks registered under international arrangements which have effect in a 
Member State; 

(iv) 

trade  marks  registered  under  international  arrangements  which  have  effect  in 
the Community; 

(cid:208) 1992/2003 Art. 1 pt. 1 

(cid:208) 40/94 

(b) 

(c) 

applications  for  the  trade  marks  referred  to  in  subparagraph  (a),  subject  to  their 
registration; 

trade marks which, on the date of application for registration of the Community trade 
mark, or, where appropriate, of the priority claimed in respect of the application for 
registration of the Community trade mark, are well known in a Member State, in the 
sense  in  which  the  words  ‘well  known’  are  used  in  Article  6  bis  of  the  Paris 
Convention. 

3. Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered 
where  an  agent  or  representative  of  the  proprietor  of  the  trade  mark  applies  for  registration 
thereof  in  his  own  name  without  the  proprietor's  consent,  unless  the  agent  or  representative 
justifies his action. 

4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in 
the course of trade of more than mere local significance, the trade mark applied for shall not 
be registered where and to the extent that, pursuant to the Community legislation or the law of 
the Member State governing that sign: 

(cid:208) 422/2004 Art. 1 pt. 3 

(cid:208) 40/94 (adapted) 

(a) 

(b) 

rights to that sign were acquired prior to the date of application for registration of the 
Community  trade  mark,  or  the  date  of  the  priority  claimed  for  the  application  for 
registration of the Community trade mark; 

that sign confers on its proprietor the right to prohibit the use of a subsequent trade 
mark. 

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5. Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning 
of paragraph 2 ⌦ and without prejudice to paragraph 1 ⌫ , the trade mark applied for shall 
not be registered where it is identical with, or similar to, the earlier trade mark and is to be 
registered for goods or services which are not similar to those for which the earlier trade mark 
is  registered,  where,  in  the  case  of  an  earlier  Community  trade  mark,  the  trade  mark  has  a 
reputation in the Community and, in the case of an earlier national trade mark, the trade mark 
has a reputation in the Member State concerned and where the use without due cause of the 
trade  mark  applied  for  would  take  unfair  advantage  of,  or  be  detrimental  to,  the  distinctive 
character or the repute of the earlier trade mark. 

SECTION 2 

EFFECTS OF COMMUNITY TRADE MARKS 

Article 9 

Rights conferred by a Community trade mark 

1.  A  Community  trade  mark  shall  confer  on  the  proprietor  exclusive  rights  therein.  The 
proprietor shall be entitled to prevent all third parties not having his consent from using in the 
course of trade: 

(a) 

(b) 

(c) 

any sign which  is identical with  the Community trade  mark  in relation to goods or 
services  which  are  identical  with  those  for  which  the  Community  trade  mark  is 
registered; 

any  sign  where,  because  of  its  identity  with,  or  similarity  to,  the  Community  trade 
mark  and  the  identity  or  similarity  of  the  goods  or  services  covered  by  the 
Community trade mark and the sign, there exists a likelihood of confusion on the part 
of  the  public;  the  likelihood  of  confusion  includes  the  likelihood  of  association 
between the sign and the trade mark; 

any sign which is identical with, or similar to, the Community trade mark in relation 
to goods or services which are not similar to those for which the Community trade 
mark is registered, where the latter has a reputation in the Community and where use 
of  that  sign  without  due  cause  takes  unfair  advantage  of,  or  is  detrimental  to,  the 
distinctive character or the repute of the Community trade mark. 

2. The following, inter alia, may be prohibited under paragraph 1: 

(a) 

(b) 

(c) 

(d) 

affixing the sign to the goods or to the packaging thereof; 

offering the goods, putting them on the market or stocking them for these purposes 
under that sign, or offering or supplying services thereunder; 

importing or exporting the goods under that sign; 

using the sign on business papers and in advertising. 

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3. The rights conferred by a Community trade mark shall prevail against third parties from the 
date of publication of registration of the trade mark. Reasonable compensation may, however, 
be claimed in respect of ⌦ acts occurring ⌫ after the date of publication of a Community 
trade  mark  application,  which ⌦ acts ⌫  would,  after  publication  of  the  registration  of  the 
trade mark, be prohibited by virtue of that publication. The court seized of the case may not 
decide upon the merits of the case until the registration has been published. 

(cid:208) 40/94 

Article 10 

Reproduction of Community trade marks in dictionaries 

If  the  reproduction  of  a  Community  trade  mark  in  a  dictionary,  encyclopaedia  or  similar 
reference  work  gives  the  impression  that  it  constitutes  the  generic  name  of  the  goods  or 
services for which the trade mark is registered, the publisher of the work shall, at the request 
of the proprietor of the Community trade mark, ensure that the reproduction of the trade mark 
at the latest in the next edition of the publication is accompanied by an indication that it is a 
registered trade mark. 

Article 11 

Prohibition on the use of a Community trade mark registered in the name of an agent or 
representative 

Where a Community trade mark is registered in the name of the agent or representative of a 
person  who  is  the  proprietor  of  that  trade  mark,  without  the  proprietor's  authorisation,  the 
latter shall be entitled to oppose the use of his mark by his agent or representative if he has 
not authorised such use, unless the agent or representative justifies his action. 

Article 12 

Limitation of the effects of a Community trade mark 

A Community trade mark shall not entitle the proprietor to prohibit a third party from using in 
the course of trade: 

(a) 

(b) 

(c) 

his own name or address; 

indications  concerning  the  kind,  quality,  quantity,  intended  purpose,  value, 
geographical  origin,  the  time  of  production  of  the  goods  or  of  rendering  of  the 
service, or other characteristics of the goods or service; 

the trade mark where it is necessary to indicate the intended purpose of a product or 
service, in particular as accessories or spare parts, 

EN 

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provided  he  uses  them  in  accordance  with  honest  practices  in  industrial  or  commercial 
matters. 

(cid:208) 40/94 

(cid:208) 40/94 (adapted) 

Article 13 

Exhaustion of the rights conferred by a Community trade mark 

1.  A  Community  trade  mark  shall  not  entitle  the  proprietor  to  prohibit  its  use  in  relation  to 
goods  which  have  been  put  on  the  market  in  the  Community  under  that  trade  mark  by  the 
proprietor or with his consent. 

2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose 
further  commercialisation  of  the  goods,  especially  where  the  condition  of  the  goods  is 
changed or impaired after they have been put on the market. 

Article 14 

Complementary application of national law relating to infringement 

1. The effects of Community trade marks shall be governed solely by the provisions of this 
Regulation. In other respects, infringement of a Community trade mark shall be governed by 
the  national  law  relating  to  infringement  of  a  national  trade  mark  in  accordance  with  the 
provisions of Title X. 

2.  This  Regulation  shall  not  prevent  actions  concerning  a  Community  trade  mark  being 
brought  under  the  law  of  Member  States  relating  in  particular  to  civil  liability  and  unfair 
competition. 

3. The rules of procedure to be applied shall be determined in accordance with the provisions 
of Title X. 

SECTION 3 

USE OF COMMUNITY TRADE MARKS 

Article 15 

Use of Community trade marks 

1.  If,  within  a  period  of  five  years  following  registration,  the  proprietor  has  not  put  the 
Community  trade  mark  to  genuine  use  in  the  Community  in  connection  with  the  goods  or 
services  in  respect  of  which  it  is  registered,  or  if  such  use  has  been  suspended  during  an 

EN 

15 

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uninterrupted period of five years, the Community trade mark shall be subject to the sanctions 
provided for in this Regulation, unless there are proper reasons for non-use. 

The following shall also constitute use within the meaning of ⌦ the first subparagraph ⌫: 

(a) 

(b) 

use of the Community trade mark in a form differing in elements which do not alter 
the distinctive character of the mark in the form in which it was registered; 

affixing  of  the  Community  trade  mark  to  goods  or  to  the  packaging  thereof  in  the 
Community solely for export purposes. 

2.  Use  of  the  Community  trade  mark  with  the  consent  of  the  proprietor  shall  be  deemed  to 
constitute use by the proprietor. 

SECTION 4 

COMMUNITY TRADE MARKS AS OBJECTS OF PROPERTY 

Article 16 

Dealing with Community trade marks as national trade marks 

1.  Unless  Articles  17  to  24  provide  otherwise,  a  Community  trade  mark  as  an  object  of 
property  shall  be  dealt  with  in  its  entirety,  and  for  the  whole  area  of  the  Community,  as  a 
national  trade  mark  registered  in  the  Member  State  in  which,  according  to  the  Register  of 
Community trade marks, 

(a) 

(b) 

the proprietor has his seat or his domicile on the relevant date;  

where  ⌦ point ⌫  (a)  does  not  apply,  the  proprietor  has  an  establishment  on  the 
relevant date. 

(cid:208) 40/94 

2. In cases which are not provided for by paragraph 1, the Member State referred to in that 
paragraph shall be the Member State in which the seat of the Office is situated. 

3. If two or more persons are mentioned in the Register of Community trade marks as joint 
proprietors, paragraph 1 shall apply to the joint proprietor first mentioned; failing this, it shall 
apply  to  the  subsequent  joint  proprietors  in  the  order  in  which  they  are  mentioned.  Where 
paragraph 1 does not apply to any of the joint proprietors, paragraph 2 shall apply. 

Article 17 

Transfer 

1.  A  Community  trade  mark  may  be  transferred,  separately  from  any  transfer  of  the 
undertaking, in respect of some or all of the goods or services for which it is registered. 

EN 

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2.  A  transfer  of  the  whole  of  the  undertaking  shall  include  the  transfer  of  the  Community 
trade  mark  except  where,  in  accordance  with  the  law  governing  the  transfer,  there  is 
agreement  to  the  contrary  or  circumstances  clearly  dictate  otherwise.  This  provision  shall 
apply to the contractual obligation to transfer the undertaking. 

3.  Without  prejudice  to  paragraph  2,  an  assignment  of  the  Community  trade  mark  shall  be 
made in writing and shall require the signature of the parties to the contract, except when it is 
a result of a judgment; otherwise it shall be void. 

4. Where it is clear from the transfer documents that because of the transfer the Community 
trade mark is likely to mislead the public concerning the nature, quality or geographical origin 
of the goods or services in respect of which it is registered, the Office shall not register the 
transfer  unless  the  successor  agrees  to  limit  registration  of  the  Community  trade  mark  to 
goods or services in respect of which it is not likely to mislead. 

5. On request of one of the parties a transfer shall be entered in the Register and published. 

6. As long as the transfer has not been entered in the Register, the successor in title may not 
invoke the rights arising from the registration of the Community trade mark. 

7. Where there are time limits to be observed vis-à-vis the Office, the successor in title may 
make  the  corresponding  statements  to  the  Office  once  the  request  for  registration  of  the 
transfer has been received by the Office. 

8. All documents which require notification to the proprietor of the Community trade mark in 
accordance with Article 79 shall be addressed to the person registered as proprietor. 

Article 18 

Transfer of a trade mark registered in the name of an agent 

Where a Community trade mark is registered in the name of the agent or representative of a 
person  who  is  the  proprietor  of  that  trade  mark,  without  the  proprietor's  authorisation,  the 
latter shall be entitled to demand the assignment in his favour of the said registration, unless 
such agent or representative justifies his action. 

Article 19 

Rights in rem 

1. A Community trade mark may, independently of the undertaking, be given as security or be 
the subject of rights in rem. 

2.  On  request  of  one  of  the  parties,  rights  mentioned  in  paragraph  1  shall  be  entered  in  the 
Register and published. 

EN 

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Article 20 

Levy of execution 

1. A Community trade mark may be levied in execution. 

2. As regards the procedure for levy of execution in respect of a Community trade mark, the 
courts  and  authorities  of  the  Member  States  determined  in  accordance  with  Article  16  shall 
have exclusive jurisdiction. 

3.  On  request  of  one  the  parties,  levy  of  execution  shall  be  entered  in  the  Register  and 
published. 

(cid:208) 422/2004 Art. 1 pt. 4 

Article 21 

Insolvency proceedings 

1. The only insolvency proceedings in which a Community trade mark may be involved are 
those opened in the Member State in the territory of which the debtor has his centre of main 
interests. 

(cid:208) 422/2004 Art. 1 pt. 4 (adapted) 

However,  where  the  debtor  is  an  insurance  undertaking  or  a  credit  institution  as  defined  in 
the  Council12  and 
Directive  2001/17/EC  of 
⌦ Directive ⌫ 2001/24/EC of the European Parliament and of the Council13, respectively, 
the only insolvency proceedings in which a Community trademark may be involved are those 
opened in the Member State where that undertaking or institution has been authorised. 

the  European  Parliament  and  of 

(cid:208) 422/2004 Art. 1 pt. 4 

2. In the case of joint proprietorship of a Community trade mark, paragraph 1 shall apply to 
the share of the joint proprietor. 

3. Where a Community trade mark is involved in insolvency proceedings, on request of the 
competent  national  authority  an  entry  to  this  effect  shall  be  made  in  the  Register  and 
published in the Community Trade Marks Bulletin referred to in Article 89. 

12 
13 

OJ L 110, 20.4.2001, p. 28. 
OJ L 125, 5.5.2001, p. 15. 

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(cid:208) 40/94 (adapted) 

Article 22 

Licensing 

1.  A  Community  trade  mark  may  be  licensed  for  some  or  all  of  the  goods  or  services  for 
which it is registered and for the whole or part of the Community. A licence may be exclusive 
or non-exclusive. 

2. The proprietor of a Community trade mark may invoke the rights conferred by that trade 
mark against a licensee who contravenes any provision in his licensing contract with regard 
to: 

⌦ (a) ⌫ 

its duration;  

⌦ (b) ⌫ 

the form covered by the registration in which the trade mark may be used;  

⌦ (c) ⌫ 

the scope of the goods or services for which the licence is granted;  

⌦ (d) ⌫ 

the territory in which the trade mark may be affixed; or  

⌦ (e) ⌫ 

the  quality  of  the  goods  manufactured  or  of  the  services  provided  by  the 

licensee. 

3.  Without  prejudice  to  the  provisions  of  the  licensing  contract,  the  licensee  may  bring 
proceedings  for  infringement  of  a  Community  trade  mark  only  if  its  proprietor  consents 
thereto.  However,  the  holder  of  an  exclusive  licence  may  bring  such  proceedings  if  the 
proprietor  of  the  trade  mark,  after  formal  notice,  does  not  himself  bring  infringement 
proceedings within an appropriate period. 

4. A licensee shall, for the purpose of obtaining compensation for damage suffered by him, be 
entitled to intervene in infringement proceedings brought by the proprietor of the Community 
trade mark. 

5. On request of one of the parties the grant or transfer of a licence in respect of a Community 
trade mark shall be entered in the Register and published. 

Article 23 

Effects vis-à-vis third parties 

1. Legal acts referred to in Article 17, 19 and 22 concerning a Community trade mark shall 
have  effects  vis-à-vis  third  parties  in  all  the  Member  States  ⌦ only ⌫  after  entry  in  the 
Register.  Nevertheless,  such  an  act,  before  it  is  so  entered,  shall  have  effect  vis-à-vis  third 
parties who have acquired rights in the trade mark after the date of that act but who knew of 
the act at the date on which the rights were acquired. 

EN 

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2. Paragraph 1 shall not apply in the case of a person who acquires the Community trade mark 
or  a  right  concerning  the  Community  trade  mark  by  way  of  transfer  of  the  whole  of  the 
undertaking or by any other universal succession. 

3. The effects vis-à-vis third parties of the legal acts referred to in Article 20 shall be governed 
by the law of the Member State determined in accordance with Article 16. 

4.  Until  such  time  as  common  rules  for  the  Member  States  in  the  field  of  bankruptcy  enter 
into  force,  the  effects  vis-à-vis  third  parties  of  bankruptcy  or  like  proceedings  shall  be 
governed by the law of the Member State in which such proceedings are first brought within 
the meaning of national law or of conventions applicable in this field. 

Article 24 

The application for a Community trade mark as an object of property 

Articles 16 to 23 shall apply to applications for Community trade marks. 

TITLE III 

APPLICATION FOR COMMUNITY TRADE MARKS 

SECTION 1 

FILING OF APPLICATIONS AND THE CONDITIONS WHICH 
GOVERN THEM 

Article 25 

Filing of applications 

1. An application for a Community trade mark shall be filed, at the choice of the applicant: 

(a) 

(b) 

at the Office;  

at  the  central  industrial  property  office  of  a  Member  State  or  at  the  ⌦ Benelux 
Office  for  Intellectual  Property ⌫.  An  application  filed  in  this  way  shall  have  the 
same effect as if it had been filed on the same date at the Office. 

2. Where the application is filed at the central industrial property office of a Member State or 
at  the  ⌦ Benelux  Office  for  Intellectual  Property ⌫,  that  office  shall  take  all  steps  to 
forward the application to the Office for Harmonisation in the Internal Market (trade marks 
and designs) within two weeks after filing. It may charge the applicant a fee which shall not 
exceed the administrative costs of receiving and forwarding the application. 

EN 

20 

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3. Applications referred to in paragraph 2 which reach the Office more than two months after 
filing  shall  be  deemed  to  have  been  filed  on  the  date  on  which  the  application  reached  the 
Office. 

(cid:208) 422/2004 Art. 1 pt. 5 

4. Ten years after the entry into force of Regulation ⌦ (EC) No 40/94 ⌫, the Commission 
shall  draw  up  a  report  on  the  operation  of  the  system  of  filing  applications  for  Community 
trade marks, together with any proposals for modifying this system. 

(cid:208) 40/94 (adapted) 
(cid:206)1 1992/2003 Art. 1 pt. 6 

Article 26 

Conditions with which applications must comply 

1. An application for a Community trade mark shall contain: 

(a) 

(b) 

(c) 

(d) 

a request for the registration of a Community trade mark; 

information identifying the applicant; 

a list of the goods or services in respect of which the registration is requested; 

a representation of the trade mark. 

2.  The  application  for  a  Community  trade  mark  shall  be  subject  to  the  payment  of  the 
application fee and, when appropriate, of one or more class fees. 

3. An application for a Community trade mark must comply with the conditions laid down in 
the implementing Regulation referred to in Article (cid:206)1 162  (1), hereinafter referred to as 
the “Implementing Regulation”. 

Article 27 

Date of filing 

The  date  of  filing  of  a  Community  trade  mark  application  shall  be  the  date  on  which 
documents containing the information specified in Article 26(1) are filed with the Office by 
the applicant or, if the application has been filed with the central office of a Member State or 
with the ⌦ Benelux Office for Intellectual Property ⌫, with that office, subject to payment 
of the application fee within a period of one month of filing the abovementioned documents. 

EN 

21 

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Article 28 

Classification 

Goods  and  services  in  respect  of  which  Community  trade  marks  are  applied  for  shall  be 
classified  in  conformity  with  the  system  of  classification  specified  in  the  Implementing 
Regulation. 

SECTION 2 

PRIORITY 

Article 29 

Right of priority 

(cid:208) 3288/94 Art. 1 pt. 4 (adapted) 

1. A person who has duly filed an application for a trade mark in or ⌦ in respect of ⌫ any 
State  party  to  the  Paris  Convention  or  to  the  Agreement  establishing  the  World  Trade 
Organisation,  or  his  successors  in  title,  shall  enjoy,  for  the  purpose  of  filing  a  Community 
trade  mark  application  for  the  same  trade  mark  in  respect  of  goods  or  services  which  are 
identical  with  or  contained  within  those  for  which  the  application  has  been  filed,  a  right  of 
priority during a period of six months from the date of filing of the first application. 

(cid:208) 40/94 

2. Every filing that is equivalent to a regular national filing under the national law of the State 
where it was made or under bilateral or multilateral agreements shall be recognised as giving 
rise to a right of priority. 

3.  By  a  regular  national  filing  is  meant  any  filing  that  is  sufficient  to  establish  the  date  on 
which the application was filed, whatever may be the outcome of the application. 

4.  A  subsequent  application  for  a  trade  mark  which  was  the  subject  of  a  previous  first 
application in respect of the same goods or services and which is filed in or in respect of the 
same State shall be considered as the first application for the purposes of determining priority, 
provided that, at the date of filing of the subsequent application, the previous application has 
been withdrawn, abandoned or refused, without being open to public inspection and without 
leaving any rights outstanding, and has not served as a basis for claiming a right of priority. 
The previous application may not thereafter serve as a basis for claiming a right of priority. 

5. If the first filing has been made in a State which is not a party to the Paris Convention or to 
the Agreement establishing the World Trade Organisation, paragraphs 1 to 4 shall apply only 

(cid:208) 3288/94 Art. 1 pt. 5 

EN 

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in so far as that State, according to published findings, grants, on the basis of the first filing 
made at the Office and subject to conditions equivalent to those laid down in this Regulation, 
a right of priority having equivalent effect. 

(cid:208) 40/94 

Article 30 

Claiming priority 

An  applicant  desiring  to  take  advantage  of  the  priority  of  a  previous  application  shall  file  a 
declaration of priority and a copy of the previous application. If the language of the latter is 
not  one  of  the  languages  of  the  Office,  the  applicant  shall  file  a  translation  of  the  previous 
application in one of those languages. 

Article 31 

Effect of priority right 

The  right  of  priority  shall  have  the  effect  that  the  date  of  priority  shall  count  as  the  date  of 
filing of the Community trade mark application for the purposes of establishing which rights 
take precedence. 

Article 32 

Equivalence of Community filing with national filing 

A Community trade  mark  application  which has been  accorded  a  date  of  filing  shall,  in  the 
Member States, be equivalent to a regular national filing, where appropriate with the priority 
claimed for the Community trade mark application. 

SECTION 3 

EXHIBITION PRIORITY 

Article 33 

Exhibition priority 

1. If an applicant for a Community trade mark has displayed goods or services under the mark 
applied  for,  at  an  official  or  officially  recognised  international  exhibition  falling  within  the 
terms of  the Convention on International Exhibitions signed at Paris on 22 November 1928 
and last revised on 30 November 1972, he may, if he files the application within a period of 
six months from the date of the first display of the goods or services under the mark applied 
for, claim a right of priority from that date within the meaning of Article 31. 

EN 

23 

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2. An applicant who wishes to claim priority pursuant to paragraph 1 must file evidence of the 
display of goods or services under the mark applied for under the conditions laid down in the 
Implementing Regulation. 

3. An exhibition priority granted in a Member State or in a third country does not extend the 
period of priority laid down in Article 29. 

SECTION 4 

CLAIMING THE SENIORITY OF A NATIONAL TRADE MARK 

Article 34 

Claiming the seniority of a national trade mark 

1. The proprietor of an earlier trade mark registered in a Member State, including a trade mark 
registered  in  the  Benelux  countries,  or  registered  under  international  arrangements  having 
effect  in  a  Member  State,  who  applies  for  an  identical  trade  mark  for  registration  as  a 
Community  trade  mark  for  goods  or  services  which  are  identical  with  or  contained  within 
those  for  which  the  earlier  trade  mark  has  been  registered,  may  claim  for  the  Community 
trade  mark  the  seniority  of  the  earlier  trade  mark  in  respect  of  the  Member  State  in  or  for 
which it is registered. 

2. Seniority shall have the sole effect under this Regulation that, where the proprietor of the 
Community  trade  mark  surrenders  the  earlier  trade  mark  or  allows  it  to  lapse,  he  shall  be 
deemed to continue to have the same rights as he would have had if the earlier trade mark had 
continued to be registered. 

3. The  seniority  claimed for  the  Community trade mark shall lapse if the earlier trade mark 
the seniority of which is claimed is declared to have been revoked or to be invalid or if it is 
surrendered prior to the registration of the Community trade mark. 

Article 35 

Claiming seniority after registration of the Community trade mark 

(cid:208) 422/2004 Art. 1 pt. 6 

1.  The  proprietor  of  a  Community  trade  mark  who  is  the  proprietor  of  an  earlier  identical 
trade  mark  registered  in  a  Member  State,  including  a  trade  mark  registered  in  the  Benelux 
countries or of an earlier identical trade mark, with an international registration effective in a 
Member State, for goods or services which are identical to those for which the earlier trade 
mark  has  been  registered,  or  contained  within  them,  may  claim  the  seniority  of  the  earlier 
trade mark in respect of the Member State in or for which it was registered. 

EN 

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2. Article 34(2) and (3) shall apply. 

(cid:208) 40/94 

TITLE IV 

REGISTRATION PROCEDURE 

SECTION 1 

EXAMINATION OF APPLICATIONS 

Article 36 

Examination of the conditions of filing 

1. The Office shall examine whether: 

(a) 

the Community trade mark application satisfies the requirements for the accordance 
of a date of filing in accordance with Article 27; 

(b) 

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

(cid:208) 422/2004 Art. 1 pt. 7 

(cid:208) 40/94 

(c) 

where appropriate, the class fees have been paid within the prescribed period. 

2. Where the Community trade mark application does not satisfy the requirements referred to 
in paragraph 1, the Office shall request the applicant to remedy the deficiencies or the default 
on payment within the prescribed period. 

3. If the deficiencies or the default on payment established pursuant to paragraph 1(a) are not 
remedied  within  this  period,  the  application  shall  not  be  dealt  with  as  a  Community  trade 
mark application. If the applicant complies with the Office's request, the Office shall accord 
as  the  date  of  filing  of  the  application  the  date  on  which  the  deficiencies  or  the  default  on 
payment established are remedied. 

4.  If  the  deficiencies  established  pursuant  to  paragraph  1(b)  are  not  remedied  within  the 
prescribed period, the Office shall refuse the application. 

5. If the default on payment established pursuant to paragraph 1(c) is not remedied within the 
prescribed  period,  the  application  shall  be  deemed  to  be  withdrawn  unless  it  is  clear  which 
categories of goods or services the amount paid is intended to cover. 

EN 

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6. Failure to satisfy the requirements concerning the claim to priority shall result in loss of the 
right of priority for the application. 

7. Failure to satisfy the requirements concerning the claiming of seniority of a national trade 
mark shall result in loss of that right for the application. 

Article 37 

Examination as to absolute grounds for refusal 

1. Where, under Article 7, a trade mark is ineligible for registration in respect of some or all 
of  the  goods  or  services  covered  by  the  Community  trade  mark  application,  the  application 
shall be refused as regards those goods or services. 

2. Where the trade mark contains an element which is not distinctive, and where the inclusion 
of that element in the trade mark could give rise to doubts as to the scope of protection of the 
trade mark, the Office may request, as a condition for registration of said trade mark, that the 
applicant state that he disclaims any exclusive right to such element. Any disclaimer shall be 
published  together  with  the  application  or  the  registration  of  the  Community  trade  mark,  as 
the case may be. 

3. The application shall not be refused before the applicant has been allowed the opportunity 
of withdrawing or amending the application or of submitting his observations. 

SECTION 2 

SEARCH 

Article 38 

Search 

(cid:208) 422/2004 Art. 1 pt. 9 

1. Once the Office has accorded a date of filing, it shall draw up a Community search report 
citing those earlier Community trade marks or Community trade mark applications discovered 
which may be invoked under Article 8 against the registration of the Community trade mark 
applied for. 

2. Where, at the time of filing a Community trade mark application, the applicant requests that 
a  search  report  also  be  prepared  by  the  central  industrial  property  offices  of  the  Member 
States  and  where  the  appropriate  search  fee  has  been  paid  within  the  time-limit  for  the 
payment of the filing fee, the Office shall, as soon as a Community trade mark application has 
been accorded a date of filing, transmit a copy thereof to the central industrial property office 
of each Member State which has informed the Office of its decision to operate a search in its 
own register of trade marks in respect of Community trade mark applications. 

EN 

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3. Each of the central industrial property offices referred to in paragraph 2 shall communicate 
to the Office within two months as from the date on which it received the Community trade 
mark application a search report which shall either cite those earlier national trade marks or 
trade  mark  applications  discovered  which  may  be  invoked  under  Article  8  against  the 
registration of the Community trade mark applied for, or state that the search has revealed no 
such rights. 

4. The search reports referred to in paragraph 3 shall be prepared on a standard form drawn up 
by  the  Office,  after  consulting  the  Administrative  Board  provided  for  in  Article  126(1), 
hereinafter referred to as “the Administrative Board”. The essential contents of this form shall 
be set out in the Implementing Regulation. 

5.  An  amount  shall  be  paid  by  the  Office  to  each  central  industrial  property  office  for  each 
search report provided by that office in accordance with paragraph 3. The amount, which shall 
be the same for each office, shall be fixed by the Budget Committee by means of a decision 
adopted by a majority of three-quarters of the representatives of the Member States. 

6. The Office shall transmit without delay to the applicant for the Community trade mark the 
Community search report and any requested national search reports received within the time 
limit laid down in paragraph 3. 

7.  Upon  publication  of  the  Community  trade  mark  application,  which  may  not  take  place 
before the expiry of a period of one month as from the date on which the Office transmits the 
search  reports  to  the  applicant,  the  Office  shall  inform  the  proprietors  of  any  earlier 
Community  trade  marks  or  Community  trade  mark  applications  cited  in  the  Community 
search report of the publication of the Community trade mark application. 

(cid:208) 40/94 

SECTION 3 

PUBLICATION OF THE APPLICATION 

(cid:208) 422/2004 Art. 1 pt. 10 

Article 39 

Publication of the application 

1. If the conditions which the application for a Community trade mark must satisfy have been 
fulfilled  and  if  the  period  referred  to  in  Article  38(7)  has  expired,  the  application  shall  be 
published to the extent that it has not been refused pursuant to Article 37. 

2. Where, after publication, the application is refused under Article 37, the decision that it has 
been refused shall be published upon becoming final. 

EN 

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(cid:208) 40/94 

SECTION 4 

OBSERVATIONS BY THIRD PARTIES AND OPPOSITION 

Article 40 

Observations by third parties 

1.  Following  the  publication  of  the  Community  trade  mark  application,  any  natural  or  legal 
person  and  any  group  or  body  representing  manufacturers,  producers,  suppliers  of  services, 
traders  or  consumers  may  submit  to  the  Office  written  observations,  explaining  on  which 
grounds under Article 7, in particular, the trade mark shall not be registered ex officio. They 
shall not be parties to the proceedings before the Office. 

2.  The  observations  referred  to  in  paragraph  1  shall  be  communicated  to  the  applicant  who 
may comment on them. 

Article 41 

Opposition 

1.  Within  a  period  of  three  months  following  the  publication  of  a  Community  trade  mark 
application, notice of opposition to registration of the trade mark may be given on the grounds 
that it may not be registered under Article 8: 

(a) 

(b) 

(c) 

by  the  proprietors  of  earlier  trade  marks  referred  to  in  Article  8(2)  as  well  as 
licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) 
and (5); 

by the proprietors of trade marks referred to in Article 8(3); 

by the proprietors of earlier marks or signs referred to in Article 8(4) and by persons 
authorised under the relevant national law to exercise these rights. 

2.  Notice  of  opposition  to  registration  of  the  trade  mark  may  also  be  given,  subject  to  the 
conditions laid down in paragraph 1, in the event of the publication of an amended application 
in accordance with the second sentence of Article 43(2). 

3. Opposition must be expressed in writing and must specify the grounds on which it is made. 
It shall not be treated as duly entered until the opposition fee has been paid. Within a period 
fixed  by  the  Office,  the  opponent  may  submit  in  support  of  his  case  facts,  evidence  and 
arguments. 

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Article 42 

Examination of opposition 

1.  In  the  examination  of  the  opposition  the  Office  shall  invite  the  parties,  as  often  as 
necessary,  to  file  observations,  within  a  period  set  them  by  the  Office,  on  communications 
from the other parties or issued by itself. 

2.  If  the  applicant  so  requests,  the  proprietor  of  an  earlier  Community  trade  mark  who  has 
given notice of opposition shall furnish proof that, during the period of five years preceding 
the date of publication of the Community trade mark application, the earlier Community trade 
mark has been put to genuine use in the Community in connection with the goods or services 
in respect of which it is registered and which he cites as justification for his opposition, or that 
there are proper reasons for non-use, provided the earlier Community trade mark has at that 
date  been  registered  for  not  less  than  five  years.  In  the  absence  of  proof  to  this  effect,  the 
opposition shall be rejected. If the earlier Community trade mark has been used in relation to 
part  only  of  the  goods  or  services  for  which  it  is  registered  it  shall,  for  the  purposes  of  the 
examination of the opposition, be deemed to be registered in respect only of that part of the 
goods or services. 

3.  Paragraph  2  shall  apply  to  earlier  national  trade  marks  referred  to  in  Article  8(2)(a),  by 
substituting use in the Member State in which the earlier national trade mark is protected for 
use in the Community. 

4. The Office may, if it thinks fit, invite the parties to make a friendly settlement. 

5. If examination of the opposition reveals that the trade mark may not be registered in respect 
of some or all of the goods or services for which the Community trade mark application has 
been made, the application shall be refused in respect of those goods or services. Otherwise 
the opposition shall be rejected. 

6. The decision refusing the application shall be published upon becoming final. 

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SECTION 5 

WITHDRAWAL, RESTRICTION, AMENDMENT AND DIVISION OF 
THE APPLICATION 

(cid:208) 422/2004 Art. 1 pt. 11 

(cid:208) 40/94 

Article 43 

Withdrawal, restriction and amendment of the application 

1. The applicant may at any time withdraw his Community trade mark application or restrict 
the  list  of  goods  or  services  contained  therein.  Where  the  application  has  already  been 
published, the withdrawal or restriction shall also be published. 

2. In other respects, a Community trade mark application may be amended, upon request of 
the applicant, only by correcting the name and address of the applicant, errors of wording or 
of copying, or obvious mistakes, provided that such correction does not substantially change 
the  trade  mark  or  extend  the  list  of  goods  or  services.  Where  the  amendments  affect  the 
representation of the trade mark or the list of goods or services and are made after publication 
of the application, the trade mark application shall be published as amended. 

(cid:208) 422/2004 Art. 1 pt. 12 

Article 44 

Division of the application 

1. The applicant may divide the application by declaring that some of the goods or services 
included in the original application will be the subject of one or more divisional applications. 
The goods or services in the divisional application shall not overlap with the goods or services 
which  remain  in  the  original  application  or  those  which  are  included  in  other  divisional 
applications. 

2. The declaration of division shall not be admissible: 

(a) 

if,  where  an  opposition  has  been  entered  against  the  original  application,  such  a 
divisional application has the effect of introducing a division amongst the goods or 
services  against  which  the  opposition  has  been  directed,  until  the  decision  of  the 
Opposition  Division  has  become  final  or  the  opposition  proceedings  are  finally 
terminated otherwise; 

(b) 

during the periods laid down in the Implementing Regulation. 

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3. The declaration of division must comply with the provisions set out in the Implementing 
Regulation. 

4.  The  declaration  of  division  shall  be  subject  to  a  fee.  The  ⌦ declaration ⌫  shall  be 
deemed not to have been made until the fee has been paid. 

(cid:208) 422/2004 Art. 1 pt 12 (adapted) 

(cid:208) 422/2004 Art. 1 pt. 12 

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

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

7. The divisional application shall preserve the filing date and any priority date and seniority 
date of the original application. 

(cid:208) 40/94 

SECTION 6 

REGISTRATION 

Article 45 

Registration 

Where  an  application  meets  the  requirements  of  this  Regulation  and  where  no  notice  of 
opposition has been given within the period referred to in Article 41(1) or where opposition 
has been rejected by a definitive decision, the trade mark shall be registered as a Community 
trade mark, provided that the registration fee has been paid within the period prescribed. If the 
fee is not paid within this period the application shall be deemed to be withdrawn. 

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TITLE V 

DURATION, RENEWAL, ALTERATION AND DIVISION OF 
COMMUNITY TRADE MARKS 

(cid:208) 422/2004 Art. 1 pt. 13 

(cid:208) 40/94 

Article 46 

Duration of registration 

Community trade marks shall be registered for a period of ten years from the date of filing of 
the application. Registration may be renewed in accordance with Article 47 for further periods 
of ten years. 

Article 47 

Renewal 

1. Registration of the Community trade mark shall be renewed at the request of the proprietor 
of the trade mark or any person expressly authorised by him, provided that the fees have been 
paid. 

2.  The  Office  shall  inform  the  proprietor  of  the  Community  trade  mark,  and  any  person 
having  a  registered  right  in  respect  of  the  Community  trade  mark,  of  the  expiry  of  the 
registration  in  good  time  before  the  said  expiry.  Failure  to  give  such  information  shall  not 
involve the responsibility of the Office. 

3. The request for renewal shall be submitted within a period of six months ending on the last 
day  of  the  month  in  which  protection  ends.  The  fees  shall  also  be  paid  within  this  period. 
Failing  this,  the  request  may  be  submitted  and  the  fees  paid  within  a  further  period  of  six 
months following the day referred to in the first sentence, provided that an additional fee is 
paid within this further period. 

4.  Where  the  request  is  submitted  or  the  fees  paid  in  respect  of  only  some  of  the  goods  or 
services for which the Community trade mark is registered, registration shall be renewed for 
those goods or services only. 

5. Renewal shall take effect from the day following the date on which the existing registration 
expires. The renewal shall be registered. 

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Article 48 

Alteration 

1.  The  Community  trade  mark  shall  not  be  altered  in  the  register  during  the  period  of 
registration or on renewal thereof. 

2.  Nevertheless,  where  the  Community  trade  mark  includes  the  name  and  address  of  the 
proprietor, any alteration thereof not substantially affecting the identity of the trade mark as 
originally registered may be registered at the request of the proprietor. 

3.  The  publication  of  the  registration  of  the  alteration  shall  contain  a  representation  of  the 
Community trade mark as altered. Third parties whose rights may be affected by the alteration 
may challenge the registration thereof within a period of three months following publication. 

(cid:208) 422/2004 Art. 1 pt. 14 (adapted) 

Article 49 

Division of the registration 

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

2. The declaration of division shall not be admissible: 

(a) 

(b) 

if, where an application for revocation of rights or for a declaration of invalidity has 
been entered ⌦ at the Office ⌫ against the original registration, such a divisional 
declaration  has  the  effect  of  introducing  a  division  amongst  the  goods  or  services 
against which the application for revocation of rights or for a declaration of invalidity 
is  directed,  until  the  decision  of  the  Cancellation  Division  has  become  final  or  the 
proceedings are finally terminated otherwise; 

if,  where  a  counterclaim  for  revocation  or  for  a  declaration  of  invalidity  has  been 
entered in a case before a Community trade mark court, such a divisional declaration 
has the effect of introducing a division amongst the goods or services against which 
the counterclaim is directed, until the mention of the Community trade mark court's 
judgement is recorded in the Register pursuant to Article 100(6). 

3. The declaration of division must comply with the provisions set out in the Implementing 
Regulation. 

4. The declaration of division shall be subject to a fee. The declaration shall be deemed not to 
have been made until the fee has been paid. 

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

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6.  All  requests  and  applications  submitted  and  all  fees  paid  with  regard  to  the  original 
registration prior to the date on which the Office receives the declaration of division shall be 
deemed  also  to  have  been  submitted  or  paid  with  regard  to  the  divisional  registration  or 
registrations. The fees for the original registration which have been duly paid prior to the date 
on which the declaration of division is received shall not be refunded. 

7. The divisional registration shall preserve the filing date and any priority date and seniority 
date of the original registration. 

(cid:208) 40/94 (adapted) 

TITLE VI 

SURRENDER, REVOCATION AND INVALIDITY 

SECTION 1 

SURRENDER 

Article 50 

Surrender 

1.  A  Community  trade  mark  may  be  surrendered  in  respect  of  some  or  all  of  the  goods  or 
services for which it is registered. 

2. The surrender shall be declared to the Office in writing by the proprietor of the trade mark. 
It shall not have effect until it has been entered in the Register. 

3. Surrender shall be entered only with the agreement of the proprietor of a right entered in 
the  Register.  If  a  licence  has  been  registered,  surrender  shall  be  entered  in  the  Register 
⌦ only ⌫ if the proprietor of the trade mark proves that he has informed the licensee of his 
intention  to  surrender;  this  entry  shall  be  made  on  expiry  of  the  period  prescribed  by  the 
Implementing Regulation. 

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(cid:208) 40/94 

SECTION 2 

GROUNDS FOR REVOCATION 

Article 51 

Grounds for revocation 

1. The rights of the proprietor of the Community trade mark shall be declared to be revoked 
on application to the Office or on the basis of a counterclaim in infringement proceedings: 

(a) 

(b) 

(c) 

if,  within  a  continuous  period  of  five  years,  the  trade  mark  has  not  been  put  to 
genuine use in the Community in connection with the goods or services in respect of 
which  it  is  registered,  and  there  are  no  proper  reasons  for  non-use;  however,  no 
person may claim that the proprietor's rights in a Community trade mark should be 
revoked where, during the interval between expiry of the five-year period and filing 
of the application or counterclaim, genuine use of the trade mark has been started or 
resumed;  the  commencement or resumption  of use within a period of three months 
preceding the filing of the application or counterclaim which began at the earliest on 
expiry  of  the  continuous  period  of  five  years  of  non-use  shall,  however,  be 
disregarded  where  preparations  for  the  commencement  or  resumption  occur  only 
after the proprietor becomes aware that the application or counterclaim may be filed; 

if, in consequence of acts or inactivity of the proprietor, the trade mark has become 
the  common  name  in  the  trade  for  a  product  or  service  in  respect  of  which  it  is 
registered; 

if, in consequence of the use made of it by the proprietor of the trade mark or with 
his  consent  in  respect  of  the  goods  or  services  for  which  it  is  registered,  the  trade 
mark  is  liable  to  mislead  the  public,  particularly  as  to  the  nature,  quality  or 
geographical origin of those goods or services. 

2.  Where  the  grounds  for  revocation of rights exist in respect of  only some of  the goods or 
services for which the Community trade mark is registered, the rights of the proprietor shall 
be declared to be revoked in respect of those goods or services only. 

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SECTION 3 

GROUNDS FOR INVALIDITY 

Article 52 

Absolute grounds for invalidity 

1. A Community trade mark shall be declared invalid on application to the Office or on the 
basis of a counterclaim in infringement proceedings; 

(a) 

where  the  Community  trade  mark  has  been  registered contrary  to  the  provisions  of 
Article 7; 

(cid:208) 422/2004 Art. 1 pt. 16 

(cid:208) 40/94 

(b) 

where the applicant was acting in bad faith when he filed the application for the trade 
mark. 

2.  Where  the  Community  trade  mark  has  been  registered  in  breach  of  the  provisions  of 
Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the 
use  which  has  been  made  of  it,  it  has  after  registration  acquired  a  distinctive  character  in 
relation to the goods or services for which it is registered. 

3. Where the ground for invalidity exists in respect of only some of the goods or services for 
which  the  Community  trade  mark  is  registered,  the  trade  mark  shall  be  declared  invalid  as 
regards those goods or services only. 

Article 53 

Relative grounds for invalidity 

1. A Community trade mark shall be declared invalid on application to the Office or on the 
basis of a counterclaim in infringement proceedings: 

(a) 

(b) 

(c) 

where there is an earlier trade mark as referred to in Article 8(2) and the conditions 
set out in paragraph 1 or paragraph 5 of that Article are fulfilled; 

where there is a trade mark as referred to in Article 8(3) and the conditions set out in 
that paragraph are fulfilled; 

where there is an earlier right as referred to in Article 8(4) and the conditions set out 
in that paragraph are fulfilled. 

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2. A Community trade mark shall also be declared invalid on application to the Office or on 
the basis of a counterclaim in infringement proceedings where the use of such trade mark may 
be prohibited pursuant to another earlier right ⌦ under the Community legislation or national 
law governing its protection ⌫, and in particular: 

(cid:208) 422/2004 Art. 1 pt. 17 (adapted) 

(cid:208) 422/2004 Art. 1 pt. 17 

(a) 

(b) 

(c) 

(d) 

a right to a name; 

a right of personal portrayal; 

a copyright; 

an industrial property right. 

(cid:208) 40/94 (adapted) 

3.  A  Community  trade  mark  may  not  be  declared  invalid  where  the  proprietor  of  a  right 
referred to in paragraphs 1 or 2 consents expressly to the registration of the Community trade 
mark before submission of the application for a declaration of invalidity or the counterclaim. 

4.  Where  the  proprietor  of  one  of  the  rights  referred  to  in  paragraphs  1  or  2  has  previously 
applied for a declaration that a Community trade mark is invalid or made a counterclaim in 
infringement proceedings, he may not submit a new application for a declaration of invalidity 
or lodge a counterclaim on the basis of another of the said rights which he could have invoked 
in support of his first application or counterclaim. 

5. Article 52(3) shall apply. 

Article 54 

Limitation in consequence of acquiescence 

1.  Where  the  proprietor  of  a  Community  trade  mark  has  acquiesced,  for  a  period  of  five 
successive years, in the use of a later Community trade mark in the Community while being 
aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to 
apply  for  a  declaration  that  the  later  trade  mark  is  invalid  or  to  oppose  the  use  of  the  later 
trade mark in respect of the goods or services for which the later trade mark has been used, 
unless registration of the later Community trade mark was applied for in bad faith. 

2. Where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of 
another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive 
years, in the use of a later Community trade mark in the Member State in which the earlier 
trade  mark  or  the  other  earlier  sign  is  protected  while  being  aware  of  such  use,  he  shall  no 
longer be entitled on the basis of the earlier trade mark or of the other earlier sign either to 
apply  for  a  declaration  that  the  later  trade  mark  is  invalid  or  to  oppose  the  use  of  the  later 

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trade mark in respect of the goods or services for which the later trade mark has been used, 
unless registration of the later Community trade mark was applied for in bad faith. 

3.  In  the  cases  referred  to  in  paragraphs  1  and  2,  the  proprietor  of  a  later  Community  trade 
mark shall not be entitled to oppose the use of the earlier right, even though that right may no 
longer be invoked against the later Community trade mark. 

SECTION 4 

CONSEQUENCES OF REVOCATION AND INVALIDITY 

Article 55 

Consequences of revocation and invalidity 

1.  The  Community  trade  mark  shall  be  deemed  not  to  have  had,  as  from  the  date  of  the 
application for revocation or of the counterclaim, the effects specified in this Regulation, to 
the extent that the rights of the proprietor have been revoked. An earlier date, on which one of 
the grounds for revocation occurred, may be fixed in the decision at the request of one of the 
parties. 

2. The Community trade mark shall be deemed not to have had, as from the outset, the effects 
specified in this Regulation, to the extent that the trade mark has been declared invalid. 

3.  Subject  to  the  national  provisions  relating  either  to  claims  for  compensation  for  damage 
caused by negligence or lack of good faith on the part of the proprietor of the trade mark, or to 
unjust enrichment, the retroactive effect of revocation or invalidity of the trade mark shall not 
affect: 

(a) 

(b) 

any decision on infringement which has acquired the authority of a final decision and 
been enforced prior to the revocation or invalidity decision; 

any contract concluded prior to the revocation or invalidity decision, in so far as it 
has been performed before that decision; however, repayment, to an extent justified 
by the circumstances, of sums paid under the relevant contract, may be claimed on 
grounds of equity. 

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SECTION 5 

PROCEEDINGS IN THE OFFICE IN RELATION TO REVOCATION OR 
INVALIDITY 

Article 56 

Application for revocation or for a declaration of invalidity 

1. An application for revocation of the rights of the proprietor of a Community trade mark or 
for a declaration that the trade mark is invalid may be submitted to the Office: 

(a) 

(b) 

(c) 

where Articles 51 and 52 apply, by any natural or legal person and any group or body 
set  up  for  the  purpose  of  representing  the  interests  of  manufacturers,  producers, 
suppliers  of  services,  traders  or  consumers,  which  under  the  terms  of  the  law 
governing it has the capacity in its own name to sue and be sued; 

where Article 53(1) applies, by the persons referred to in Article 41(1); 

where  Article  53(2)  applies,  by  the  owners  of  the  earlier  rights  referred  to  in  that 
provision  or  by  the  persons  who  are  entitled  under  the  law  of  the  Member  State 
concerned to exercise the rights in question. 

2.  The  application  shall  be  filed  in  a  written  reasoned  statement.  It  shall  not  be  deemed  to 
have been filed until the fee has been paid. 

3. An application for revocation or for a declaration of invalidity shall be inadmissible if an 
application  relating  to  the  same  subject  matter  and  cause  of  action,  and  involving  the  same 
parties, has been adjudicated on by a court in a Member State and has acquired the authority 
of a final decision. 

Article 57 

Examination of the application 

1.  On  the  examination  of  the  application  for  revocation  of  rights  or  for  a  declaration  of 
invalidity, the Office shall invite the parties, as often as necessary, to file observations, within 
a  period  to  be  fixed  by  the  Office,  on  communications  from  the  other  parties  or  issued  by 
itself. 

2.  If  the  proprietor  of  the  Community  trade  mark  so  requests,  the  proprietor  of  an  earlier 
Community trade mark, being a party to the invalidity proceedings, shall furnish proof that, 
during  the  period  of  five  years  preceding  the  date  of  the  application  for  a  declaration  of 
invalidity, the earlier Community trade mark has been put to genuine use in the Community in 
connection with the goods or services in respect of which it is registered and which he cites as 
justification  for  his  application,  or  that  there  are  proper  reasons  for  non-use,  provided  the 
earlier Community trade mark has at that date been registered for not less than five years. If, 

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at  the  date  on  which  the  Community  trade  mark  application  was  published,  the  earlier 
Community trade mark had been registered for not less than five years, the proprietor of the 
earlier Community trade mark shall furnish proof that, in addition, the conditions contained in 
Article 42(2) were satisfied at that date. In the absence of proof to this effect the application 
for a declaration of invalidity shall be rejected. If the earlier Community trade mark has been 
used in relation to part only of the goods or services for which it is registered, it shall, for the 
purpose of the examination of the application for a declaration of invalidity, be deemed to be 
registered in respect only of that part of the goods or services. 

3.  Paragraph  2  shall  apply  to  earlier  national  trade  marks  referred  to  in  Article  8(2)(a),  by 
substituting use in the Member State in which the earlier national trade mark is protected for 
use in the Community. 

4. The Office may, if it thinks fit, invite the parties to make a friendly settlement. 

5.  If  the  examination  of  the  application  for  revocation  of  rights  or  for  a  declaration  of 
invalidity reveals that the trade mark should not have been registered in respect of some or all 
of  the  goods  or  services  for  which  it  is  registered,  the  rights  of  the  proprietor  of  the 
Community  trade  mark  shall  be  revoked  or  it  shall  be  declared  invalid  in  respect  of  those 
goods  or  services.  Otherwise  the  application  for  revocation  of  rights  or  for  a  declaration  of 
invalidity shall be rejected. 

6.  A  record  of  the  Office's  decision  on  the  application  for  revocation  of  rights  or  for  a 
declaration of invalidity shall be entered in the Register once it has become final. 

(cid:208) 422/2004 Art. 1 pt. 18 

(cid:208) 40/94 

TITLE VII 

APPEALS 

Article 58 

Decisions subject to appeal 

1. An appeal shall lie from decisions of the examiners, Opposition Divisions, Administration 
of  Trade  Marks  and  Legal  Divisions  and  Cancellation  Divisions.  It  shall  have  suspensive 
effect. 

2. A decision which does not terminate proceedings as regards one of the parties can only be 
appealed together with the final decision, unless the decision allows separate appeal. 

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Article 59 

Persons entitled to appeal and to be parties to appeal proceedings 

Any party to proceedings adversely affected by a decision may appeal. Any other parties to 
the proceedings shall be parties to the appeal proceedings as of right. 

Article 60 

Time limit and form of appeal 

Notice  of  appeal  must  be  filed  in  writing  at  the  Office  within  two  months  after  the  date  of 
notification of the decision appealed from. The notice shall be deemed to have been filed only 
when the fee for appeal has been paid. Within four months after the date of notification of the 
decision, a written statement setting out the grounds of appeal must be filed. 

(cid:208) 422/2004 Art. 1 pt. 19 

Article 61 

Revision of decisions in ex parte cases 

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

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

(cid:208) 422/2004 Art. 1 pt. 20 (adapted) 

Article 62 

Revision of decisions in inter partes cases 

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

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

3.  If,  within  two  months  of  receiving  the  notification  referred  to  in  paragraph  2,  the  other 
party does not accept that the contested decision is to be rectified and makes a declaration to 

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that effect or does not make any declaration within the period laid down, the appeal shall be 
remitted to the Board of Appeal without delay, and without comment as to its merit. 

4. However, if the department whose decision is contested does not consider the appeal to be 
admissible  and  well  founded  within  one  month  after  receipt  of  the  statement  of  grounds,  it 
shall, instead of taking the measures provided for in paragraphs 2 and 3, remit the appeal to 
the Board of Appeal without delay, and without comment as to its merit. 

(cid:208) 40/94 (adapted) 

Article 63 

Examination of appeals 

1.  If  the  appeal  is  admissible,  the  Board  of  Appeal  shall  examine  whether  the  appeal  is 
allowable. 

2. In the examination of the appeal, the Board of Appeal shall invite the parties, as often as 
necessary,  to  file  observations,  within  a  period  to  be  fixed  by  the  Board  of  Appeal,  on 
communications from the other parties or issued by itself. 

Article 64 

Decisions in respect of appeals 

1. Following the examination as to the allowability of the appeal, the Board of Appeal shall 
decide  on  the  appeal.  The  Board  of  Appeal  may  either  exercise  any  power  within  the 
competence of the department which was responsible for the decision appealed or remit the 
case to that department for further prosecution. 

2.  If  the  Board  of  Appeal  remits  the  case  for  further  prosecution  to  the  department  whose 
decision was appealed, that department shall be bound by the ratio decidendi of the Board of 
Appeal, in so far as the facts are the same. 

3. The decisions of the Boards of Appeal shall take effect only as from the date of expiration 
of the period referred to in Article 65(5) or, if an action has been brought before the Court of 
Justice within that period, as from the date of ⌦ dismissal ⌫ of such action. 

(cid:208) 40/94 

Article 65 

Actions before the Court of Justice 

1.  Actions  may  be  brought  before  the  Court  of  Justice  against  decisions  of  the  Boards  of 
Appeal on appeals. 

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2. The action may be brought on grounds of lack of competence, infringement of an essential 
procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law 
relating to their application or misuse of power. 

3. The Court of Justice has jurisdiction to annul or to alter the contested decision. 

4. The action shall be open to any party to proceedings before the Board of Appeal adversely 
affected by its decision. 

5. The action shall be brought before the Court of Justice within two months of the date of 
notification of the decision of the Board of Appeal. 

6. The Office shall be required to take the necessary measures to comply with the judgment of 
the Court of Justice. 

TITLE VIII 

COMMUNITY COLLECTIVE MARKS 

Article 66 

Community collective marks 

1. A Community collective mark shall be a Community trade mark which is described as such 
when  the  mark  is  applied  for  and  is  capable  of  distinguishing  the  goods  or  services  of  the 
members  of  the  association  which  is  the  proprietor  of  the  mark  from  those  of  other 
undertakings.  Associations  of  manufacturers,  producers,  suppliers  of  services,  or  traders 
which,  under  the  terms  of  the  law  governing  them,  have  the  capacity  in  their  own  name  to 
have rights and obligations of all kinds, to make contracts or accomplish other legal acts and 
to  sue  and  be  sued,  as  well  as  legal  persons  governed  by  public  law,  may  apply  for 
Community collective marks. 

2.  In  derogation  from  Article  7(1)(c),  signs  or  indications  which  may  serve,  in  trade,  to 
designate  the  geographical  origin  of  the  goods  or  services  may  constitute  Community 
collective  marks  within  the  meaning  of  paragraph  1.  A  collective  mark  shall  not  entitle  the 
proprietor to prohibit a third party from using in the course of trade such signs or indications, 
provided  he  uses  them  in  accordance  with  honest  practices  in  industrial  or  commercial 
matters; in particular, such a mark may not be invoked against a third party who is entitled to 
use a geographical name. 

3.  The  provisions  of  this  Regulation  shall  apply  to  Community  collective  marks,  unless 
Articles 67 to 74 provide otherwise. 

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Article 67 

Regulations governing use of the mark 

1. An applicant for a Community collective mark must submit regulations governing its use 
within the period prescribed. 

2.  The  regulations  governing  use  shall  specify  the  persons  authorised  to  use  the  mark,  the 
conditions  of  membership  of  the  association  and,  where  they  exist,  the  conditions  of  use  of 
the  mark  including  sanctions.  The  regulations  governing  use  of  a  mark  referred  to  in 
Article 66(2) must authorise any person whose goods or services originate in the geographical 
area concerned to become a member of the association which is the proprietor of the mark. 

Article 68 

Refusal of the application 

1. In addition to the grounds for refusal of a Community trade mark application provided for 
in Articles 36 and 37, an application for a Community collective mark shall be refused where 
the provisions of Article 66 or 67 are not satisfied, or where the regulations governing use are 
contrary to public policy or to accepted principles of morality. 

2. An application for a Community collective mark shall also be refused if the public is liable 
to be misled as regards the character or the significance of the mark, in particular if it is likely 
to be taken to be something other than a collective mark. 

3.  An  application  shall  not  be  refused  if  the  applicant,  as  a  result  of  amendment  of  the 
regulations governing use, meets the requirements of paragraphs 1 and 2. 

Article 69 

Observations by third parties 

Apart from the cases mentioned in Article 40, any person, group or body referred to in that 
Article  may  submit  to  the  Office  written  observations  based  on  the  particular  grounds  on 
which the application for a Community collective mark should be refused under the terms of 
Article 68. 

Article 70 

Use of marks 

Use of a Community collective mark by any person who has authority to use it shall satisfy 
the requirements of this Regulation, provided that the other conditions which this Regulation 
imposes with regard to the use of Community trade marks are fulfilled. 

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Article 71 

Amendment of the regulations governing use of the mark 

1.  The  proprietor  of  a  Community  collective  mark  must  submit  to  the  Office  any  amended 
regulations governing use. 

2. The amendment shall not be mentioned in the Register if the amended regulations do not 
satisfy the requirements of Article 67 or involve one of the grounds for refusal referred to in 
Article 68. 

3. Article 69 shall apply to amended regulations governing use. 

4. For the purposes of applying this Regulation, amendments to the regulations governing use 
shall take effect only from the date of entry of the mention of the amendment in the Register. 

Article 72 

Persons who are entitled to bring an action for infringement 

1.  The  provisions  of  Article  22(3)  and  (4)  concerning  the  rights  of  licensees  shall  apply  to 
every person who has authority to use a Community collective mark. 

2. The proprietor of a Community collective mark shall be entitled to claim compensation on 
behalf of persons who have authority to use the mark where they have sustained damage in 
consequence of unauthorised use of the mark. 

Article 73 

Grounds for revocation 

Apart from the grounds for revocation provided for in Article 51, the rights of the proprietor 
of a Community collective mark shall be revoked on application to the Office or on the basis 
of a counterclaim in infringement proceedings, if: 

(a) 

(b) 

(c) 

the  proprietor  does  not  take  reasonable  steps  to  prevent  the  mark  being  used  in  a 
manner incompatible with the conditions of use, where these exist, laid down in the 
regulations  governing  use,  amendments  to  which  have,  where  appropriate,  been 
mentioned in the Register; 

the  manner  in  which  the  mark  has  been  used  by  the  proprietor  has  caused  it  to 
become liable to mislead the public in the manner referred to in Article 68(2); 

an amendment to the regulations governing use of the mark has been mentioned in 
the Register in breach of the provisions of Article 71(2), unless the proprietor of the 
mark,  by  further  amending  the  regulations  governing  use,  complies  with  the 
requirements of those provisions. 

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Article 74 

Grounds for invalidity 

Apart  from  the  grounds  for  invalidity  provided  for  in  Articles  52  and  53,  a  Community 
collective mark which is registered in breach of the provisions of Article 68 shall be declared 
invalid  on  application  to  the  Office  or  on  the  basis  of  a  counterclaim  in  infringement 
proceedings,  unless  the  proprietor  of  the  mark,  by  amending  the  regulations  governing  use, 
complies with the requirements of those provisions. 

TITLE IX 

PROCEDURE 

SECTION 1 

GENERAL PROVISIONS 

Article 75 

Statement of reasons on which decisions are based 

Decisions of the Office shall state the reasons on which they are based. They shall be based 
only  on  reasons  or  evidence  on  which  the  parties  concerned  have  had  on  opportunity  to 
present their comments. 

Article 76 

Examination of the facts by the Office of its own motion 

1. In proceedings before it the Office shall examine the facts of its own motion; however, in 
proceedings  relating  to  relative  grounds  for  refusal  of  registration,  the  Office  shall  be 
restricted in this examination to the facts, evidence and arguments provided by the parties and 
the relief sought. 

2.  The  Office  may  disregard  facts  or  evidence  which  are  not  submitted  in  due  time  by  the 
parties concerned. 

Article 77 

Oral proceedings 

1. If the Office considers that oral proceedings would be expedient they shall be held either at 
the instance of the Office or at the request of any party to the proceedings. 

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2. Oral proceedings before the examiners, the Opposition Division and the Administration of 
Trade Marks and Legal Division shall not be public. 

3. Oral proceedings, including delivery of the decision, shall be public before the Cancellation 
Division and the Boards of Appeal, in so far as the department before which the proceedings 
are taking place does not decide otherwise in cases where admission of the public could have 
serious and unjustified disadvantages, in particular for a party to the proceedings. 

Article 78 

Taking of evidence 

1.  In  any  proceedings  before  the  Office,  the  means  of  giving  or  obtaining  evidence  shall 
include the following: 

(a) 

(b) 

(c) 

(d) 

(e) 

(f) 

hearing the parties; 

requests for information; 

the production of documents and items of evidence; 

hearing witnesses; 

opinions by experts; 

statements in writing sworn or affirmed or having a similar effect under the law of 
the State in which the statement is drawn up. 

2.  The  relevant  department  may  commission  one  of  its  members  to  examine  the  evidence 
adduced. 

3. If the Office considers it necessary for a party, witness or expert to give evidence orally, it 
shall issue a summons to the person concerned to appear before it. 

4. The parties shall be informed of the hearing of a witness or expert before the Office. They 
shall have the right to be present and to put questions to the witness or expert. 

Article 79 

Notification 

The Office shall, as a matter of course, notify those concerned of decisions and summonses 
and of any notice or other communication from which a time limit is reckoned, or of which 
those  concerned  must  be  notified  under  other  provisions  of  this  Regulation  or  of  the 
Implementing Regulation, or of which notification has been ordered by the President of the 
Office. 

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(cid:208) 422/2004 Art. 1 pt. 21 

Article 80 

Revocation of decisions 

1. Where the Office has made an entry in the Register or taken a decision which contains an 
obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or 
the decision is revoked. Where there is only one party to the proceedings and the entry or the 
act affects its rights, cancellation or revocation shall be determined even if the error was not 
evident to the party. 

2. Cancellation or revocation as referred to in paragraph 1 shall be determined, ex officio or at 
the request of one of the parties to the proceedings, by the department which made the entry 
or took the decision. Cancellation or revocation shall be determined within six months from 
the  date  on  which  the  entry  was  made  in  the  Register  or  the  decision  was  taken,  after 
consultation with the parties to the proceedings and any proprietor of rights to the Community 
trade mark in question that are entered in the Register. 

3. This Article shall be without prejudice to the right of the parties to submit an appeal under 
Articles 58 and 65, or to the possibility, under the procedures and conditions laid down by the 
Implementing  Regulation,  of  correcting  any  linguistic  errors  or  errors  of  transcription  and 
obvious errors  in the Office's decisions or errors attributable to  the  Office in registering the 
trade mark or in publishing its registration. 

(cid:208) 40/94 (adapted) 

Article 81 

Restitutio in integrum 

1.  The  applicant  for  or  proprietor  of  a  Community  trade  mark  or  any  other  party  to 
proceedings  before  the  Office  who,  in  spite  of  all  due  care  required  by  the  circumstances 
having been taken, was unable to ⌦ comply with ⌫ a time limit vis-à-vis the Office shall, 
upon application, have his rights re-established if the ⌦ obstacle to compliance ⌫ has the 
direct consequence, by virtue of the provisions of this Regulation, of causing the loss of any 
right or means of redress. 

2.  The  application  must  be  filed  in  writing  within  two  months  from  the  removal  of  the 
⌦ obstacle to compliance ⌫ with the time limit. The omitted act must be completed within 
this  period.  The  application  shall  only  be  admissible  within  the  year  immediately  following 
the  expiry  of  the  unobserved  time  limit.  In  the  case  of  non-submission  of  the  request  for 
renewal of registration or of non-payment of a renewal fee, the further period of six months 
provided in Article 47(3), third sentence, shall be deducted from the period of one year. 

3. The application must state the grounds on which it is based and must set out the facts on 
which it relies. It shall not be deemed to be filed until the fee for re-establishment of rights 
has been paid. 

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

5.  This  Article  shall  not  be  applicable  to  the  time  limits  referred  to  in  paragraph  2  of  this 
Article, Article 41(1) and (3) and Article 82. 

(cid:208) 422/2004 Art. 1 pt. 22 

(cid:208) 40/94 

6.  Where  the  applicant  for  or  proprietor  of  a  Community  trade  mark  has  his  rights  re-
established,  he  may  not  invoke  his  rights  vis-à-vis  a  third  party  who,  in  good  faith,  has  put 
goods on the market or supplied services under a sign which is identical with, or similar to, 
the  Community  trade  mark  in  the  course  of  the  period  between  the  loss  of  rights  in  the 
application  or  in  the  Community  trade  mark  and  publication  of  the  mention  of  re-
establishment of those rights. 

7. A third party who may avail himself of the provisions of paragraph 6 may bring third party 
proceedings against the decision re-establishing the rights of the applicant for or proprietor of 
a Community trade mark within a period of two months as from the date of publication of the 
mention of re-establishment of those rights. 

8. Nothing in this Article shall limit the right of a Member State to grant restitutio in integrum 
in  respect  of  time  limits  provided  for  in  this  Regulation  and  to  be  observed  vis-à-vis  the 
authorities of such State. 

(cid:208) 422/2004 Art. 1 pt. 23 (adapted) 

Article 82 

Continuation of proceedings 

1. An applicant for or proprietor of a Community trade mark or any other party to proceedings 
before  the  Office  who  has  omitted  to  observe  a  time  limit  vis-à-vis  the  Office  may,  upon 
request, obtain the continuation of proceedings, provided that at the time the request is made 
the  omitted  act  has  been  carried  out.  The  request  for  continuation  of  proceedings  shall  be 
admissible only if it is presented within two months following the expiry of the unobserved 
time limit. The request shall not be deemed to have been filed until the fee for continuation of 
the proceedings has been paid. 

2. This Article shall not be applicable to the time limits laid down in Article 25(3), Article 27, 
Article  29(1),  Article  33(1),  Article  36(2),  Article  41,  Article  42,  Article  47(3),  Article  60, 
Article 62, Article 65(5), Article 81, Article 112, or to the time limits laid down in this Article 
or  the  time  limits  laid  down  by  the  Implementing  Regulation  for  claiming  ⌦ ,  after  the 
application  has  been  filed, ⌫  priority  within  the  meaning  of  Article  30,  exhibition  priority 
within the meaning of Article 33 or seniority within the meaning of Article 34 . 

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

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

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5. If the Office rejects the application, the fee shall be refunded. 

(cid:208) 40/94 

Article 83 

Reference to general principles 

In the absence of procedural provisions in this Regulation, the Implementing Regulation, the 
fees regulations or the rules of procedure of the Boards of Appeal, the Office shall take into 
account the principles of procedural law generally recognised in the Member States. 

Article 84 

Termination of financial obligations 

1. Rights of the Office to the payment of a fee shall be extinguished after four years from the 
end of the calendar year in which the fee fell due. 

2. Rights against the Office for the refunding of fees or sums of money paid in excess of a fee 
shall  be  extinguished  after  four  years  from  the  end  of  the  calendar  year  in  which  the  right 
arose. 

3.  The  period  laid  down  in  paragraphs  1  and  2  shall  be  interrupted,  in  the  case  covered  by 
paragraph 1, by a request for payment of the fee, and in the case covered by paragraph 2, by a 
reasoned claim in writing. On interruption it shall begin again immediately and shall end at 
the  latest  six  years  after  the  end  of  the  year  in  which  it  originally  began,  unless,  in  the 
meantime, judicial proceedings to enforce the right have begun; in this case the period shall 
end at the earliest one year after the judgement has acquired the authority of a final decision. 

SECTION 2 

COSTS 

Article 85 

Costs 

1. The losing party in opposition proceedings, proceedings for revocation, proceedings for a 
declaration of invalidity or appeal proceedings shall bear the fees incurred by the other party 
as  well  as  all  costs,  without  prejudice  to  Article  119(6),  incurred  by  him  essential  to  the 
proceedings,  including  travel  and  subsistence  and  the  remuneration  of  an  agent,  adviser  or 
advocate,  within  the  limits  of  the  scales  set  for  each  category  of  costs  under  the  conditions 
laid down in the Implementing Regulation. 

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2.  However,  where  each  party  succeeds  on  some  and  fails  on  other  heads,  or  if  reasons  of 
equity  so  dictate,  the  Opposition  Division,  Cancellation  Division  or  Board  of  Appeal  shall 
decide a different apportionment of costs. 

3.  The  party  who  terminates  the  proceedings  by  withdrawing  the  Community  trade  mark 
application,  the  opposition,  the  application  for  revocation  of  rights,  the  application  for  a 
declaration of invalidity or the appeal, or by not renewing registration of the Community trade 
mark or by surrendering the Community trade mark, shall bear the fees and the costs incurred 
by the other party as stipulated in paragraphs 1 and 2. 

4.  Where  a  case  does  not  proceed  to  judgment  the  costs  shall  be  at  the  discretion  of  the 
Opposition Division, Cancellation Division or Board of Appeal. 

5. Where the parties conclude before the Opposition Division, Cancellation Division or Board 
of Appeal a settlement of costs differing from that provided for in the preceding paragraphs, 
the department concerned shall take note of that agreement. 

(cid:208) 422/2004 Art. 1 pt. 24 

6. The Opposition Division or Cancellation Division or Board of Appeal shall fix the amount 
of  the  costs  to  be  paid  pursuant  to  the  preceding  paragraphs  when  the  costs  to  be  paid  are 
limited  to  the  fees  paid  to  the  Office  and  the  representation  costs.  In  all  other  cases,  the 
registry  of  the  Board  of  Appeal  or  a  member  of  the  staff  of  the  Opposition  Division  or 
Cancellation  Division  shall  fix  the  amount  of  the  costs  to  be  reimbursed  on  request.  The 
request is admissible only within two months of the date on which the decision for which an 
application was made for the costs to be fixed became final. The amount so determined may 
be  reviewed  by  a  decision  of  the  Opposition  Division  or  Cancellation  Division  or  Board  of 
Appeal on a request filed within the prescribed period. 

(cid:208) 40/94 (adapted) 
(cid:206)1 422/2004 Art. 1 pt. 25(a) 

Article 86 

Enforcement of decisions fixing the amount of costs 

1. Any final decision of the Office fixing the amount of costs shall be enforceable. 

2. Enforcement shall be governed by the rules of civil procedure in force in the State in the 
territory  of  which  it  is  carried  out.  The  order  for  its  enforcement  shall  be  appended  to  the 
decision, without other formality than verification of the authenticity of the decision, by the 
national  authority  which  the  Government  of  each  Member  State  shall  designate  for  this 
purpose and shall make known to the Office and to the Court of Justice. 

3.  When  these  formalities  have  been  completed  on  application  by  the  party  concerned,  the 
latter may proceed to enforcement in accordance with the national law, by bringing the matter 
directly before the competent authority. 

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4. Enforcement may be suspended only by a decision of the Court of  Justice. However, the 
courts  of  the  country  concerned  shall  have  jurisdiction  over  complaints  that  enforcement  is 
being carried out in an irregular manner. 

SECTION 3 

INFORMATION ⌦ WHICH MAY BE MADE AVAILABLE TO ⌫ THE 
PUBLIC AND OF THE AUTHORITIES OF THE MEMBER STATES 

Article 87 

Register of Community trade marks 

The  Office  shall  keep  a  register  to  be  known  as  the  Register  of  Community  trade  marks, 
which shall contain those particulars the registration or inclusion of which is provided for by 
this  Regulation  or  by  the  Implementing  Regulation.  The  Register  shall  be  open  to  public 
inspection. 

Article 88 

Inspection of files 

1. The files relating to Community trade mark applications which have not yet been published 
shall not be made available for inspection without the consent of the applicant. 

2. Any person who can prove that the applicant for a Community trade mark has stated that 
after  the  trade  mark  has  been  registered  he  will  invoke  the  rights  under  it  against  him  may 
obtain  inspection  of  the  files  prior  to  the  publication  of  that  application  and  without  the 
consent of the applicant. 

3. Subsequent to the publication of the Community trade mark application, the files relating to 
such application and the resulting trade mark may be inspected on request. 

4. However, where the files are inspected pursuant to paragraphs 2 or 3, certain documents in 
the  file  may  be  withheld  from  inspection  in  accordance  with  the  provisions  of  the 
Implementing Regulation. 

Article 89 

Periodical publications 

The Office shall periodically publish: 

(a) 

a  Community  Trade  Marks  Bulletin  containing  entries  made  in  the  Register  of 
Community  trade  marks  as  well  as  other  particulars  the  publication  of  which  is 
prescribed by this Regulation or by the Implementing Regulation; 

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(b) 

an Official Journal containing notices and information of a general character issued 
by  the  President  of  the  Office,  as  well  as  any  other  information  relevant  to  this 
Regulation or its implementation. 

Article 90 

Administrative cooperation 

Unless otherwise provided in this Regulation or in national laws, the Office and the courts or 
authorities  of  the  Member  States  shall  on  request  give  assistance  to  each  other  by 
communicating information or opening files for inspection. Where the Office lays files open 
to inspection by courts, Public Prosecutors' Offices or central industrial property offices, the 
inspection shall not be subject to the restrictions laid down in Article 88. 

Article 91 

Exchange of publications 

1. The Office and the central industrial property offices of the Member States shall despatch 
to  each  other  on  request  and  for  their  own  use  one  or  more  copies  of  their  respective 
publications free of charge. 

2. The Office may conclude agreements relating to the exchange or supply of publications. 

SECTION 4 

REPRESENTATION 

Article 92 

General principles of representation 

1.  Subject  to  the  provisions  of  paragraph  2,  no person  shall  be  compelled  to  be  represented 
before the Office. 

2.  Without  prejudice  to  paragraph  3,  second  sentence,  natural  or  legal  persons  not  having 
either  their  domicile  or  their principal  place  of  business  or  a  real  and  effective  industrial  or 
commercial  establishment  in  the  Community  must  be  represented  before  the  Office  in 
accordance with Article 93(1) in all proceedings established by this Regulation, other than in 
filing an application for a Community trade mark; the Implementing Regulation may permit 
other exceptions. 

3. (cid:206)1 Natural or legal persons having their domicile or principal place of business or a real 
and  effective  industrial  or  commercial  establishment  in  the  Community  may  be  represented 
before the Office by an employee.  An employee of a legal person to which this paragraph 
applies may also represent other legal persons which have economic connections with the first 
legal person, even if those other legal persons have neither their domicile nor their principal 

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place  of  business  nor  a  real  and  effective  industrial  or  commercial  establishment  within  the 
Community. 

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

(cid:208) 422/2004 Art. 1 pt. 25(b) 

(cid:208) 40/94 

Article 93 

Professional representatives 

1. Representation of natural or legal persons before the Office may only be undertaken by: 

(a) 

(b) 

any legal practitioner qualified in one of the Member States and having his place of 
business within the Community, to the extent that he is entitled, within the said State, 
to act as a representative in trade mark matters;  

(cid:208) 422/2004 Art. 1 pt. 26(a) 

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

(cid:208) 40/94 
(cid:206)1 422/2004 Art. 1 pt. 26(b) 

Representatives acting before the Office must file with it a signed authorisation for insertion 
on the files, the details of which are set out in the Implementing Regulation. 

2.  Any  natural  person  who  fulfils  the  following  conditions  may  be  entered  on  the  list  of 
professional representatives: 

(a) 

(b) 

(c) 

he must be a national of one of the Member States; 

he must have his place of business or employment in the Community; 

(cid:206)1 he  must  be  entitled  to  represent  natural  or  legal  persons  in  trade  mark  matters 
before  the  central  industrial  property  office  of  a  Member  State.   Where,  in  that 
State, the entitlement is not conditional upon the requirement of special professional 
qualifications,  persons  applying  to  be  entered  on  the  list  who  act  in  trade  mark 
matters  before  the  central  industrial  property  office  of  the  said  State  must  have 
habitually  so  acted  for  at  least  five  years.  However,  persons  whose  professional 
qualification  to  represent  natural  or  legal  persons  in  trade  mark  matters  before  the 
central industrial property office of one of the Member States is officially recognised 

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54 

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in accordance with the regulations laid down by such State shall not be subject to the 
condition of having exercised the profession. 

3. Entry shall be effected upon request, accompanied by a certificate furnished by the central 
industrial  property  office  of  the  Member  State  concerned,  which  must  indicate  that  the 
conditions laid down in paragraph 2 are fulfilled. 

4. The President of the Office may grant exemption from: 

(a) 

the requirement of paragraph 2(c), second sentence, if the applicant furnishes proof 
that he has acquired the requisite qualification in another way; 

(b) 

the requirement of paragraph 2(a) in special circumstances. 

5.  The  conditions  under  which  a  person  may  be  removed  from  the  list  of  professional 
representatives shall be laid down in the Implementing Regulation. 

TITLE X 

JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING 
TO COMMUNITY TRADE MARKS 

SECTION 1 

APPLICATION OF ⌦ REGULATION (EC) NO 44/2001 ⌫ 

(cid:208) 40/94 (adapted) 

Article 94 

Application of ⌦ Regulation (EC) No 44/2001 ⌫ 

1.  Unless  otherwise  specified  in  this  Regulation,  ⌦ Regulation  (EC)  No  44/2001 ⌫  shall 
apply  to  proceedings  relating  to  Community  trade  marks  and  applications  for  Community 
trade marks, as well as to proceedings relating to simultaneous and successive actions on the 
basis of Community trade marks and national trade marks. 

2. In the case of proceedings in respect of the actions and claims referred to in Article 96: 

(cid:208) 40/94 

(a) 

Articles  2  and  4,  ⌦ points  1,  3,  4  and  5  of  Article  5 ⌫  and  Article  ⌦ 31  of 
Regulation (EC) No 44/2001 ⌫ shall not apply; 

(cid:208) 40/94 (adapted) 

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(b) 

(c) 

Articles ⌦ 23 and 24 of Regulation (EC) No 44/2001 ⌫ shall apply subject to the 
limitations in Article 97(4) of this Regulation; 

the provisions of ⌦ Chapter ⌫ II of ⌦ Regulation (EC) No 44/2001 ⌫ which are 
applicable to persons domiciled in a Member State shall also be applicable to persons 
who do not have a domicile in any Member State but have an establishment therein. 

(cid:208) 40/94 

SECTION 2 

DISPUTES CONCERNING THE INFRINGEMENT AND VALIDITY OF 
COMMUNITY TRADE MARKS 

Article 95 

Community trade mark courts 

1.  The  Member  States  shall  designate  in  their  territories  as  limited  a  number  as  possible  of 
national  courts  and  tribunals  of  first  and  second  instance,  hereinafter  referred  to  as 
‘Community trade mark courts’, which shall perform the functions assigned to them by this 
Regulation. 

2. Each Member State shall communicate to the Commission within three years of the entry 
into force of Regulation (EC) No 40/94 a list of Community trade mark courts indicating their 
names and their territorial jurisdiction. 

3. Any change made after communication of the list referred to in paragraph 2 in the number, 
names or territorial jurisdiction of the courts shall be notified without delay by the Member 
State concerned to the Commission. 

4. The information referred to in paragraphs 2 and 3 shall be notified by the Commission to 
the Member States and published in the Official Journal of the European ⌦ Union ⌫. 

(cid:208) 40/94 (adapted) 

(cid:208) 40/94 

5.  As  long  as  a  Member  State  has  not  communicated  the  list  as  stipulated  in  paragraph  2, 
jurisdiction for any proceedings resulting from an action or application covered by Article 96, 
and  for  which  the  courts  of  that  State  have  jurisdiction  under  Article  97,  shall  lie  with  that 
court of the State in question which would have jurisdiction ratione loci and ratione materiae 
in the case of proceedings relating to a national trade mark registered in that State. 

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Article 96 

Jurisdiction over infringement and validity 

The Community trade mark courts shall have exclusive jurisdiction: 

(a) 

(b) 

(c) 

(d) 

for  all  infringement  actions  and  —  if  they  are  permitted  under  national  law  — 
actions in respect of threatened infringement relating to Community trade marks; 

for actions for declaration of non-infringement, if they are permitted under national 
law; 

for all actions brought as a result of acts referred to in Article 9(3), second sentence; 

for counterclaims for revocation or for a declaration of invalidity of the Community 
trade mark pursuant to Article 100. 

Article 97 

International jurisdiction 

(cid:208) 40/94 (adapted) 

1.  Subject  to  the  provisions  of  this  Regulation  as  well  as  to  any  provisions  of 
⌦ Regulation (EC) No 44/2001 ⌫ applicable by virtue of Article 94, proceedings in respect 
of the actions and claims referred to in Article 96 shall be brought in the courts of the Member 
State  in  which  the  defendant  is  domiciled  or,  if  he  is  not  domiciled  in  any  of  the  Member 
States, in which he has an establishment. 

(cid:208) 40/94 

2. If the defendant is neither domiciled nor has an establishment in any of the Member States, 
such proceedings shall be brought in the courts of the Member State in which the plaintiff is 
domiciled  or,  if  he  is  not  domiciled  in  any  of  the  Member  States,  in  which  he  has  an 
establishment. 

3. If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such 
proceedings shall be brought in the courts of the Member State where the Office has its seat. 

4. Notwithstanding the provisions of paragraphs 1, 2 and 3: 

(cid:208) 40/94 (adapted) 

(a) 

(b) 

Article ⌦ 23 of Regulation (EC) No 44/2001 ⌫ shall apply if the parties agree that 
a different Community trade mark court shall have jurisdiction; 

Article ⌦ 24 of Regulation (EC) No 44/2001 ⌫ shall apply if the defendant enters 
an appearance before a different Community trade mark court. 

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(cid:208) 40/94 

5.  Proceedings  in  respect  of  the  actions  and  claims  referred  to  in  Article  96,  with  the 
exception of actions for a declaration of non-infringement of a Community trade mark, may 
also be brought in the courts of the Member State in which the act of infringement has been 
committed  or  threatened,  or  in  which  an  act  within  the  meaning  of  Article  9(3),  second 
sentence, has been committed. 

Article 98 

Extent of jurisdiction 

1.  A  Community  trade  mark  court  whose  jurisdiction  is  based  on  Article  97(1)  to  (4)  shall 
have jurisdiction in respect of: 

(a) 

(b) 

acts  of  infringement  committed  or  threatened  within  the  territory  of  any  of  the 
Member States; 

acts  within  the  meaning  of  Article  9(3),  second  sentence,  committed  within  the 
territory of any of the Member States. 

2.  A  Community  trade  mark  court  whose  jurisdiction  is  based  on  Article  97(5)  shall  have 
jurisdiction only in respect of acts committed or threatened within the territory of the Member 
State in which that court is situated. 

Article 99 

Presumption of validity — Defence as to the merits 

1. The Community trade mark courts shall treat the Community trade mark as valid unless its 
validity is put in issue by the defendant with a counterclaim for revocation or for a declaration 
of invalidity. 

2.  The  validity  of  a  Community  trade  mark  may  not  be  put  in  issue  in  an  action  for  a 
declaration of non-infringement. 

3. In the actions referred to in Article 96(a) and (c) a plea relating to revocation or invalidity 
of  the  Community  trade  mark  submitted  otherwise  than  by  way  of  a  counterclaim  shall  be 
admissible in so far as the defendant claims that the rights of the proprietor of the Community 
trade  mark  could  be  revoked  for  lack  of  use  or  that  the  Community  trade  mark  could  be 
declared invalid on account of an earlier right of the defendant. 

Article 100 

Counterclaims 

1. A counterclaim for revocation or for a declaration of invalidity may only be based on the 
grounds for revocation or invalidity mentioned in this Regulation. 

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2.  A  Community  trade  mark  court  shall  reject  a  counterclaim  for  revocation  or  for  a 
declaration of invalidity if a decision taken by the Office relating to the same subject matter 
and cause of action and involving the same parties has already become final. 

3. If the counterclaim is brought in a legal action to which the proprietor of the trade mark is 
not already a party, he shall be informed thereof and may be joined as a party to the action in 
accordance with the conditions set out in national law. 

4.  The  Community  trade  mark  court  with  which  a  counterclaim  for  revocation  or  for  a 
declaration of invalidity of the Community trade mark has been filed shall inform the Office 
of  the  date  on  which  the  counterclaim  was  filed.  The  latter  shall  record  this  fact  in  the 
Register of Community trade marks. 

5. Article 57(2) to (5) shall apply. 

(cid:208) 422/2004 Art. 1 pt. 27 

(cid:208) 40/94 (adapted) 

6. Where a Community trade mark court has given a judgment which has become final on a 
counterclaim  for  revocation  or  for  invalidity  of  a  Community  trade  mark,  a  copy  of  the 
judgment  shall  be  sent  to  the  Office.  Any  party  may  request  information  about  such 
transmission.  The  Office  shall  mention  the  judgment  in  the  Register  of  Community  trade 
marks in accordance with the provisions of the Implementing Regulation. 

7. The Community trade mark court hearing a counterclaim for revocation or for a declaration 
of  invalidity  may  stay  the  proceedings  on  application  by  the  proprietor  of  the  Community 
trade  mark  and  after  hearing  the  other  parties  and  may  request  the  defendant  to  submit  an 
application for revocation or for a declaration of invalidity to the Office within a time limit 
which it shall determine. If the application is not made within the time limit, the proceedings 
shall continue; the counterclaim shall be deemed withdrawn. Article 104(3) shall apply. 

Article 101 

Applicable law 

1. The Community trade mark courts shall apply the provisions of this Regulation. 

2. On all matters not covered by this Regulation a Community trade mark court shall apply its 
national law, including its private international law. 

3.  Unless  otherwise  provided  in  this  Regulation,  a  Community  trade  mark  court  shall  apply 
the rules of procedure governing the same type of action relating to a national trade mark in 
the Member State ⌦ in which the court is located ⌫. 

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59 

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Article 102 

Sanctions 

1. Where a Community trade mark court finds that the defendant has infringed or threatened 
to infringe a Community trade mark, it shall, unless there are special reasons for not doing so, 
issue  an  order  prohibiting  the  defendant  from  proceeding  with  the  acts  which  infringed  or 
would  infringe  the  Community  trade  mark.  It  shall  also  take  such  measures  in  accordance 
with its national law as are aimed at ensuring that this prohibition is complied with. 

2. In all other respects the Community trade mark court shall apply the law of the Member 
State in which the acts of infringement or threatened infringement were committed, including 
the private international law. 

Article 103 

Provisional and protective measures 

1.  Application  may  be  made  to  the  courts  of  a  Member  State,  including  Community  trade 
mark courts, for such provisional, including protective, measures in respect of a Community 
trade mark  or  Community  trade  mark application as may  be available under the law of that 
State in respect of a national trade mark, even if, under this Regulation, a Community trade 
mark court of another Member State has jurisdiction as to the substance of the matter. 

2. A Community trade mark court whose jurisdiction is based on Article 97(1), (2), (3) or (4) 
shall  have  jurisdiction  to  grant  provisional  and  protective  measures  which,  subject  to  any 
necessary  procedure 
III  of 
⌦ Regulation (EC) No 44/2001 ⌫, are applicable in the territory of any Member State. No 
other court shall have such jurisdiction. 

recognition  and  enforcement  pursuant 

to  Title 

for 

Article 104 

Specific rules on related actions 

1. A Community trade mark court hearing an action referred to  in Article 96, other  than  an 
action  for  a  declaration  of  non-infringement  shall,  unless  there  are  special  grounds  for 
continuing the hearing, of its own motion after hearing the parties or at the request of one of 
the parties and after hearing the other parties, stay the proceedings where the validity of the 
Community  trade  mark  is  already  in  issue  before  another  Community  trade  mark  court  on 
account  of  a  counterclaim  or  where  an  application  for  revocation  or  for  a  declaration  of 
invalidity has already been filed at the Office. 

2.  The  Office,  when  hearing  an  application  for  revocation  or  for  a  declaration  of  invalidity 
shall,  unless  there  are  special  grounds  for  continuing  the  hearing,  of  its  own  motion  after 
hearing the parties or at the request of one of the parties and after hearing the other parties, 
stay the proceedings where the validity of the Community trade mark is already in issue on 
account  of  a  counterclaim  before  a  Community  trade  mark  court.  However,  if  one  of  the 
parties to the proceedings before the Community trade mark court so requests, the court may, 

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60 

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after hearing the other parties to these proceedings, stay the proceedings. The Office shall in 
this instance continue the proceedings pending before it. 

3. Where the Community trade mark court stays the proceedings it may order provisional and 
protective measures for the duration of the stay. 

Article 105 

Jurisdiction of Community trade mark courts of second instance — Further appeal 

1. An appeal to the Community trade mark courts of second instance shall lie from judgments 
of the Community trade mark courts of first instance in respect of proceedings arising from 
the actions and claims referred to in Article 96. 

2. The conditions under which an appeal may be lodged with a Community trade mark court 
of second instance shall be determined by the national law of the Member State in which that 
court is located. 

3. The national rules concerning further appeal shall be applicable in respect of judgments of 
Community trade mark courts of second instance. 

SECTION 3 

OTHER DISPUTES CONCERNING COMMUNITY TRADE MARKS 

Article 106 

Supplementary provisions on the jurisdiction of national courts other than Community 
trade mark courts 

1. Within the Member State whose courts have jurisdiction under Article 94(1) those courts 
shall have jurisdiction for actions other than those referred to in Article 96, which would have 
jurisdiction ratione loci and ratione materiae in the case of actions relating to a national trade 
mark registered in that State. 

2. Actions relating to a Community trade mark, other than those referred to in Article 96, for 
which  no  court  has  jurisdiction  under  Article  94(1)  and  paragraph  1  of  this  Article  may  be 
heard before the courts of the Member State in which the Office has its seat. 

Article 107 

Obligation of the national court 

A national court which is dealing with an action relating to a Community trade mark, other 
than the action referred to in Article 96, shall treat the trade mark as valid. 

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SECTION 4 

TRANSITIONAL PROVISION 

Article 108 

Transitional provision relating to the application of the Convention on Jurisdiction and 
Enforcement 

The provisions of ⌦ Regulation (EC) No 44/2001 ⌫ which are rendered applicable by the 
preceding Articles shall have effect in respect of any Member State solely in the text of the 
Regulation which is in force in respect of that State at any given time. 

TITLE XI 

EFFECTS ON THE LAWS OF THE MEMBER STATES 

SECTION 1 

CIVIL ACTIONS ON THE BASIS OF MORE THAN ONE TRADE MARK 

Article 109 

Simultaneous and successive civil actions on the basis of Community trade marks and 
national trade marks 

1. Where actions for infringement involving the same cause of action and between the same 
parties  are  brought  in  the  courts  of  different  Member  States,  one  seized  on  the  basis  of  a 
Community trade mark and the other seized on the basis of a national trade mark: 

(a) 

(b) 

the court other than the court first seized shall of its own motion decline jurisdiction 
in  favour  of  that  court  where  the  trade  marks  concerned  are  identical  and  valid  for 
identical goods or services. The court which would be required to decline jurisdiction 
may stay its proceedings if the jurisdiction of the other court is contested; 

the  court  other  than  the  court  first  seized  may  stay  its  proceedings  where  the  trade 
marks concerned are identical and valid for similar goods or services and where the 
trade marks concerned are similar and valid for identical or similar goods or services. 

2. The court hearing an action for infringement on the basis of a Community trade mark shall 
reject the action if a final judgment on the merits has been given on the same cause of action 
and  between  the  same  parties  on  the  basis  of  an  identical  national  trade  mark  valid  for 
identical goods or services. 

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3.  The  court  hearing  an  action  for  infringement  on  the  basis  of  a  national  trade  mark  shall 
reject the action if a final judgment on the merits has been given on the same cause of action 
and  between  the  same  parties  on  the  basis  of  an  identical  Community  trade  mark  valid  for 
identical goods or services. 

4.  Paragraphs  1,  2  and  3  shall  not  apply  in  respect  of  provisional,  including  protective, 
measures. 

SECTION 2 

APPLICATION OF NATIONAL LAWS FOR THE PURPOSE OF 
PROHIBITING THE USE OF COMMUNITY TRADE MARKS 

Article 110 

Prohibition of use of Community trade marks 

1. This Regulation shall, unless otherwise provided for, not affect the right existing under the 
laws  of  the  Member  States  to  invoke  claims  for  infringement  of  earlier  rights  within  the 
meaning of Article 8 or Article 53(2) in relation to the use of a later Community trade mark. 
Claims  for  infringement  of  earlier  rights  within  the  meaning  of  Article  8(2)  and  (4)  may, 
however, no longer be invoked if the proprietor of the earlier right may no longer apply for a 
declaration that the Community trade mark is invalid in accordance with Article 54(2). 

2.  This  Regulation  shall,  unless  otherwise  provided  for,  not  affect  the  right  to  bring 
proceedings  under  the  civil,  administrative  or  criminal  law  of  a  Member  Sate  or  under 
provisions  of  Community  law  for  the  purpose  of  prohibiting  the  use  of  a  Community  trade 
mark to the extent that the use of a national trade mark may be prohibited under the law of 
that Member State or under Community law. 

Article 111 

Prior rights applicable to particular localities 

1. The proprietor of an earlier right which only applies to a particular locality may oppose the 
use of the Community trade mark in the territory where his right is protected in so far as the 
law of the Member State concerned so permits. 

2. Paragraph 1 shall cease to apply if the proprietor of the earlier right has acquiesced in the 
use of the Community trade mark in the territory where his right is protected for a period of 
five successive years, being aware of such use, unless the Community trade mark was applied 
for in bad faith. 

3. The proprietor of the Community trade mark shall not be entitled to oppose use of the right 
referred  to  in  paragraph  1  even  though  that  right  may  no  longer  be  invoked  against  the 
Community trade mark. 

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SECTION 3 

CONVERSION INTO A NATIONAL TRADE MARK APPLICATION 

Article 112 

Request for the application of national procedure 

1. The applicant for or proprietor of a Community trade mark may request the conversion of 
his Community trade mark application or Community trade mark into a national trade mark 
application: 

(a) 

to  the  extent  that  the  Community  trade  mark  application  is  refused,  withdrawn,  or 
deemed to be withdrawn; 

(b) 

to the extent that the Community trade mark ceases to have effect. 

2. Conversion shall not take place: 

(a) 

(b) 

where the rights of the proprietor of the Community trade mark have been revoked 
on  the  grounds  of  non-use,  unless  in  the  Member  State  for  which  conversion  is 
requested the Community trade mark has been put to use which would be considered 
to be genuine use under the laws of that Member State; 

for  the  purpose  of  protection  in  a  Member  State  in  which,  in  accordance  with  the 
decision of the Office or of the national court, grounds for refusal of registration or 
grounds for revocation or invalidity apply to the Community trade mark application 
or Community trade mark. 

3.  The  national  trade  mark  application  resulting  from  the  conversion  of  a  Community  trade 
mark  application  or  a  Community  trade  mark  shall  enjoy  in  respect  of  the  Member  State 
concerned the date of filing or the date of priority of that application or trade mark and, where 
appropriate, the seniority of a trade mark of that State claimed under Article 34 or 35. 

(cid:208) 422/2004 Art. 1 pt. 28 

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

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

6. Where the Community trade mark application is refused by decision of the Office or where 
the Community trade mark ceases to have effect as a result of a decision of the Office or of a 

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Community  trade  mark  court,  the  request  for  conversion  shall  be  filed  within  three  months 
after the date on which that decision acquired the authority of a final decision. 

7. The effect referred to in Article 32 shall lapse if the request is not filed in due time. 

(cid:208) 40/94 

Article 113 

Submission, publication and transmission of the request for conversion 

1. A request for conversion shall be filed with the Office and shall specify the Member States 
in which application of the procedure for registration of a national trade mark is desired. The 
request shall not be deemed to be filed until the conversion fee has been paid. 

2. If the Community trade mark application has been published, receipt of any such request 
shall  be  recorded  in  the  Register  of  Community  trade  marks  and  the  request  for  conversion 
shall be published. 

(cid:208) 422/2004 Art. 1 pt. 29 

3.  The  Office  shall  check  whether  the  conversion  requested  fulfils  the  conditions  set  out  in 
this  Regulation,  in  particular  Article  112(1),  (2),  (4),  (5)  and  (6),  and  paragraph  1  of  this 
Article,  together  with  the  formal  conditions  laid  down  in  the  Implementing  Regulation.  If 
these  conditions  are  fulfilled,  the  Office  shall  transmit  the  request  for  conversion  to  the 
industrial property offices of the Member States specified therein. 

(cid:208) 40/94 

Article 114 

Formal requirements for conversion 

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

(cid:208) 422/2004 Art. 1 pt. 30 

(cid:208) 40/94 

2.  A  Community  trade  mark  application  or  a  Community  trade  mark  transmitted  in 
accordance  with  Article  113  shall  not  be  subjected  to  formal  requirements  of  national  law 
which  are  different  from  or  additional  to  those  provided  for  in  this  Regulation  or  in  the 
Implementing Regulation. 

3. Any central industrial property office to which the request is transmitted may require that 
the applicant shall, within not less than two months: 

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(a) 

(b) 

(c) 

(d) 

pay the national application fee; 

file  a  translation  in  one  of  the  official  languages  of  the  State  in  question  of  the 
request and of the documents accompanying it; 

indicate an address for service in the State in question; 

supply  a  representation  of  the  trade  mark  in  the  number  of  copies  specified  by  the 
State in question. 

TITLE XII 

THE OFFICE 

SECTION 1 

GENERAL PROVISIONS 

Article 115 

Legal status 

1. The Office shall be a body of the Community. It shall have legal personality. 

2.  In  each  of  the  Member  States  the  Office  shall  enjoy  the  most  extensive  legal  capacity 
accorded  to  legal  persons  under  their  laws;  it  may,  in  particular,  acquire  or  dispose  of 
movable and immovable property and may be a party to legal proceedings. 

3. The Office shall be represented by its President. 

Article 116 

Staff 

1. The Staff Regulations of officials of the European Communities, hereinafter referred to as 
“the  Staff  Regulations”,  the  Conditions  of  Employment  of  other  servants  of  the  European 
Communities,  and  the  rules  adopted  by  agreement  between  the  Institutions  of  the  European 
Communities for giving effect to those Staff Regulations and Conditions of Employment shall 
apply  to  the  staff  of  the  Office,  without  prejudice  to  the  application  of  Article  136  to  the 
members of the Boards of Appeal. 

2.  Without  prejudice  to  Article  125,  the  powers  conferred  on  each  Institution  by  the  Staff 
Regulations and by the Conditions of Employment of other servants shall be exercised by the 
Office in respect of its staff. 

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Article 117 

Privileges and immunities 

The Protocol on the Privileges and Immunities of the European Communities shall apply to 
the Office. 

Article 118 

Liability 

1.  The  contractual  liability  of  the  Office  shall  be  governed  by  the  law  applicable  to  the 
contract in question. 

2. The Court of Justice shall be competent to give judgment pursuant to any arbitration clause 
contained in a contract concluded by the Office. 

3.  In  the  case  of  non-contractual  liability,  the  Office  shall,  in  accordance  with  the  general 
principles common to the laws of the Member States, make good any damage caused by its 
departments or by its servants in the performance of their duties. 

4.  The  Court  of  Justice  shall  have  jurisdiction  in  disputes  relating  to  compensation  for  the 
damage referred to in paragraph 3. 

5. The personal liability of its servants towards the Office shall be governed by the provisions 
laid down in their Staff Regulations or in the Conditions of Employment applicable to them. 

Article 119 

Languages 

1. The application for a Community trade mark shall be filed in one of the official languages 
of the European Community. 

2. The languages of the Office shall be English, French, German, Italian and Spanish. 

3. The applicant must indicate a second language which shall be a language of the Office the 
use of which he accepts as a possible language of proceedings for opposition, revocation or 
invalidity proceedings. 

If the application was filed in a language which is not one of the languages of the Office, the 
Office shall arrange to have the application, as described in Article 26(1), translated into the 
language indicated by the applicant. 

4. Where the applicant for a Community trade mark is the sole party to proceedings before the 
Office, the language of proceedings shall be the language used for filing the application for a 
Community trade mark. If the application was made in a language other than the languages of 
the  Office,  the  Office  may  send  written  communications  to  the  applicant  in  the  second 
language indicated by the applicant in his application. 

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5. The notice of opposition and an application for revocation or invalidity shall be filed in one 
of the languages of the Office. 

6. If the language chosen, in accordance with paragraph 5, for the notice of opposition or the 
application for revocation or invalidity is the language of the application for a trade mark or 
the  second  language  indicated  when  the  application  was  filed,  that  language  shall  be  the 
language of the proceedings. 

If  the  language  chosen,  in  accordance  with  paragraph  5,  for  the  notice  of  opposition  or  the 
application for revocation or invalidity is neither  the language of the  application for a trade 
mark nor the second language indicated when the application was filed, the opposing party or 
the party seeking revocation or invalidity shall be required to produce, at his own expense, a 
translation  of  his  application  either  into  the  language  of  the  application  for  a  trade  mark, 
provided that it is a language of the Office, or into the second language indicated when the 
application  was  filed.  The  translation  shall  be  produced  within  the  period  prescribed  in  the 
implementing  regulation.  The  language  into  which  the  application  has  been  translated  shall 
then become the language of the proceedings. 

7.  Parties  to  opposition,  revocation,  invalidity  or  appeal  proceedings  may  agree  that  a 
different  official  language  of  the  European  Community  is  to  be  the  language  of  the 
proceedings. 

Article 120 

Publication and entries in the Register 

1.  An  application  for  a  Community  trade  mark,  as  described  in  Article  26(1),  and  all  other 
information  the  publication  of  which  is  prescribed  by  this  Regulation  or  the  implementing 
regulation, shall be published in all the official languages of the European Community. 

2.  All  entries  in  the  Register  of  Community  trade  marks  shall  be  made  in  all  the  official 
languages of the European Community. 

3.  In  cases  of  doubt,  the  text  in  the  language  of  the  Office  in  which  the  application  for  the 
Community trade mark was filed shall be authentic. If the application was filed in an official 
language of the European Community other than one of the languages of the Office, the text 
in the second language indicated by the applicant shall be authentic. 

Article 121 

(cid:208) 40/94 (adapted) 

The  translation  services  required  for  the  functioning  of  the  Office  shall  be  provided  by  the 
Translation Centre of the Bodies of the ⌦ European ⌫ Union . 

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(cid:208) 40/94 (adapted) 
(cid:206)1 422/2004 Art. 1 pt. 31 

Article 122 

Control of legality 

1.  The  Commission  shall  check  the  legality  of  those  acts  of  the  President  of  the  Office  in 
respect of which Community law does not provide for any check on legality by another body 
and of acts of the Budget Committee attached to the Office pursuant to Article 138. 

2. It shall require that any unlawful acts as referred to in paragraph 1 be altered or annulled. 

3. Member States and any person directly and ⌦ individually concerned ⌫ may refer to the 
Commission  any  act  as  referred  to  in  paragraph  1,  whether  express  or  implied,  for  the 
Commission  to  examine  the  legality  of  that  act.  Referral  shall  be  made  to  the  Commission 
(cid:206)1 within one month  of the day on which the party concerned first became aware of the 
act  in  question.  The  Commission  shall  take  a  decision  (cid:206)1 within  three  months .  If  no 
decision has been taken within this period, the case shall be deemed to have been dismissed. 

(cid:208) 1653/2003 Art. 1 pt. 1 (adapted) 

Article 123 

Access to documents 

1. Regulation (EC) No 1049/2001 of the European Parliament and of the Council14 shall apply 
to documents held by the Office. 

2.  The  Administrative  Board  shall  adopt  the  practical  arrangements  for  implementing 
Regulation (EC) No 1049/2001 with regard to this Regulation. 

3. Decisions taken by the Office pursuant to Article 8 of Regulation (EC) No 1049/2001 may 
give  rise  to  the  lodging  of  a  complaint  to  the  Ombudsman  or  form  the  subject  of  an  action 
before  the  Court  of  Justice  ,  under  the  conditions  laid  down  in  Articles  195  and  230  of  the 
Treaty respectively. 

(cid:208) 1653/2003 Art. 1 pt. 1 

14 

OJ L 145, 31.5.2001, p. 43. 

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(cid:208) 40/94 

SECTION 2 

MANAGEMENT OF THE OFFICE 

Article 124 

Powers of the President 

1. The Office shall be managed by the President. 

2. To this end the President shall have in particular the following functions and powers: 

(a) 

(b) 

(c) 

(d) 

(e) 

(f) 

he  shall  take  all  necessary  steps,  including  the  adoption  of  internal  administrative 
instructions and the publication of notices, to ensure the functioning of the Office; 

he  may  place  before  the  Commission  any  proposal  to  amend  this  Regulation,  the 
Implementing  Regulation,  the  rules  of  procedure  of  the  Boards  of  Appeal,  the  fees 
regulations and any other rules applying to Community trade marks after consulting 
the Administrative Board and, in the case of the fees regulations and the budgetary 
provisions of this Regulation, the Budget Committee; 

he shall draw up the estimates of the revenue and expenditure of the Office and shall 
implement the budget; 

he  shall  submit  a  management  report  to  the  Commission,  the  European  Parliament 
and the Administrative Board each year; 

he shall exercise in respect of the staff the powers laid down in Article 116(2); 

he may delegate his powers. 

3. The President shall be assisted by one or more Vice-Presidents. If the President is absent or 
indisposed, the Vice-President or one of the Vice-Presidents shall take his place in accordance 
with the procedure laid down by the Administrative Board. 

Article 125 

Appointment of senior officials 

1. The President of the Office shall be appointed by the Council from a list of at most three 
candidates,  which  shall  be  prepared  by  the  Administrative  Board.  Power  to  dismiss  the 
President shall lie with the Council, acting on a proposal from the Administrative Board. 

2. The term of office of the President shall not exceed five years. This term of office shall be 
renewable. 

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3. The Vice-President or Vice-Presidents of the Office shall be appointed or dismissed as in 
paragraph 1, after consultation of the President. 

4.  The  Council  shall  exercise  disciplinary  authority  over  the  officials  referred  to  in 
paragraphs 1 and 3. 

SECTION 3 

ADMINISTRATIVE BOARD 

Article 126 

Creation and powers 

1. An Administrative Board is hereby set up, attached to the Office. Without prejudice to the 
powers  attributed  to  the  Budget  Committee  in  Section  5  —  budget  and  financial  control  — 
the Administrative Board shall have the powers defined below. 

2. The Administrative Board shall draw up the lists of candidates provided for in Article 125. 

3. It shall advise the President on matters for which the Office is responsible. 

4. It shall be consulted before adoption of the guidelines for examination in the Office and in 
the other cases provided for in this Regulation. 

5.  It  may  deliver  opinions  and  requests  for  information  to  the  President  and  to  the 
Commission where it considers that this is necessary. 

Article 127 

Composition 

1. The Administrative Board shall be composed of one representative of each Member State 
and one representative of the Commission and their alternates. 

2.  The  members  of  the  Administrative  Board  may,  subject  to  the  provisions  of  its  rules  of 
procedure, be assisted by advisers or experts. 

Article 128 

Chairmanship 

1.  The  Administrative  Board  shall  elect  a  chairman  and  a  deputy  chairman  from  among  its 
members. The deputy chairman shall ex officio replace the chairman in the event of his being 
prevented from attending to his duties. 

2. The duration of the terms of office of the chairman and the deputy chairman shall be three 
years. The terms of office shall be renewable. 

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Article 129 

Meetings 

1. Meetings of the Administrative Board shall be convened by its chairman. 

2. The  President of  the  Office  shall  take part  in the deliberations, unless the Administrative 
Board decides otherwise. 

3. The Administrative Board shall hold an ordinary meeting once a year; in addition, it shall 
meet on the initiative of its chairman or at the request of the Commission or of one-third of 
the Member States. 

4. The Administrative Board shall adopt rules of procedure. 

5.  The  Administrative  Board  shall  take  its  decisions  by  a  simple  majority  of  the 
representatives  of  the  Member  States.  However,  a  majority  of  three-quarters  of  the 
representatives  of  the  Member  States  shall  be  required  for  the  decisions  which  the 
Administrative Board is empowered to take under Article 125(1) and (3). In both cases each 
Member State shall have one vote. 

6. The Administrative Board may invite observers to attend its meetings. 

7. The Secretariat for the Administrative Board shall be provided by the Office. 

SECTION 4 

IMPLEMENTATION OF PROCEDURES 

Article 130 

Competence 

For  taking  decisions  in  connection  with  the  procedures  laid  down  in  this  Regulation,  the 
following shall be competent: 

(a) 

(b) 

(c) 

(d) 

(e) 

Examiners; 

Opposition Divisions; 

an Administration of Trade Marks and Legal Division; 

Cancellation Divisions; 

Boards of Appeal. 

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Article 131 

Examiners 

An examiner shall be responsible for taking decisions on behalf of the Office in relation to an 
application  for  registration  of  a  Community  trade  mark,  including  the  matters  referred  to  in 
Articles 36, 37 and 68, except in so far as an Opposition Division is responsible. 

(cid:208) 40/94 (adapted) 

(cid:208) 40/94 

Article 132 

Opposition Divisions 

1.  An  Opposition  Division  shall  be  responsible  for  taking  decisions  on  an  opposition  to  an 
application to register a Community trade mark. 

2. The decisions of the Opposition Divisions shall be taken by three-member groups. At least 
one  member  shall  be  legally  qualified.  In  certain  specific  cases  provided  for  in  the 
Implementing Regulation, the decisions shall be taken by a single member. 

(cid:208) 422/2004 Art. 1 pt. 32 

(cid:208) 40/94 

Article 133 

Administration of Trade Marks and Legal Division 

1.  The  Administration  of  Trade  Marks  and  Legal  Division  shall  be  responsible  for  those 
decisions required by this Regulation which do not fall within the competence of an examiner, 
an  Opposition  Division  or  a  Cancellation  Division.  It  shall  in  particular  be  responsible  for 
decisions in respect of entries in the Register of Community trade marks. 

2.  It  shall  also  be  responsible  for  keeping  the  list  of  professional  representatives  which  is 
referred to in Article 93. 

3. A decision of the Division shall be taken by one member. 

Article 134 

Cancellation Divisions 

1.  A  Cancellation  Division  shall  be  responsible  for  taking  decisions  in  relation  to  an 
application for the revocation or declaration of invalidity of a Community trade mark. 

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2.  The  decisions  of  the  Cancellation  Divisions  shall  be  taken  by  three-member  groups.  At 
least  one  member  shall  be  legally  qualified.  In  certain  specific  cases  provided  for  in  the 
Implementing Regulation, the decisions shall be taken by a single member. 

(cid:208) 422/2004 Art. 1 pt. 33 

(cid:208) 40/94 

Article 135 

Boards of Appeal 

1. The Boards of Appeal shall be responsible  for deciding on appeals from  decisions of the 
examiners,  Opposition  Divisions,  Administration  of  Trade  Marks  and  Legal  Division  and 
Cancellation Divisions. 

2.  The  decisions  of  the  Boards  of  Appeal  shall  be  taken  by  three  members,  at  least  two  of 
whom are legally qualified. In certain specific cases, decisions shall be taken by an enlarged 
Board chaired by the President of the Boards of Appeal or by a single member, who must be 
legally qualified. 

(cid:208) 422/2004 Art. 1 pt. 34(a) 

(cid:208) 422/2004 Art. 1 pt. 34(b) 

3.  In  order  to  determine  the  special  cases  which  fall  under  the  jurisdiction  of  the  enlarged 
Board,  account  should  be  taken  of  the  legal  difficulty  or  the  importance  of  the  case  or  of 
special circumstances which justify it. Such cases may be referred to the enlarged Board: 

(a) 

by  the  authority  of  the  Boards  of  Appeal  set  up  in  accordance  with  the  rules  of 
procedure of the Boards referred to in Article 162(3), or 

(b) 

by the Board handling the case. 

4. The composition of the enlarged Board and the rules on referrals to it shall be laid down 
pursuant to the rules of procedure of the Boards referred to in Article 162(3). 

5.  To  determine  which  specific  cases  fall  under  the  authority  of  a  single  member,  account 
should  be  taken  of  the  lack  of  difficulty  of  the  legal  or  factual  matters  raised,  the  limited 
importance of the individual case or the absence of other specific circumstances. The decision 
to  confer  a  case  on  one  member  in  the  cases  referred  to  shall  be  adopted  by  the  Board 
handling the case. Further details shall be laid down in the rules of procedure of the Boards 
referred to in Article 162(3). 

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(cid:208) 422/2004 Art. 1 pt. 35 

Article 136 

Independence of the members of the Boards of Appeal 

1. The President of the Boards of Appeal and the chairmen of the Boards shall be appointed, 
in  accordance  with  the  procedure  laid  down  in  Article  125  for  the  appointment  of  the 
President of the Office, for a term of five years. They may not be removed from office during 
this  term,  unless  there  are  serious  grounds  for  such  removal  and  the  Court  of  Justice,  on 
application by the institution which appointed them, takes a decision to this effect. The term 
of  office  of  the  President  of  the  Boards  of  Appeal  and  the  chairmen  of  the  Boards  may  be 
renewed for additional five-year periods, or until retirement age if this age is reached during 
the new term of office. 

The  President  of  the  Boards  of  Appeal  shall,  inter  alia,  have  managerial  and  organisational 
powers, principally to: 

(a) 

(b) 

(c) 

(d) 

chair the authority of the Boards of Appeal responsible for laying down the rules and 
organising  the  work  of  the  Boards,  which  authority  is  provided  for  in  the  rules  of 
procedure of the Boards referred to in Article 162(3); 

ensure the implementation of the authority's decisions; 

allocate  cases  to  a  Board  on  the  basis  of  objective  criteria  determined  by  the 
authority of the Boards of Appeal; 

forward to the President of the Office the Boards' expenditure requirements, with a 
view to drawing up the expenditure estimates. 

The President of the Boards of Appeal shall chair the enlarged Board. 

Further  details  shall  be  laid  down  in  the  rules  of  procedure  of  the  Boards  referred  to  in 
Article 162(3). 

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

3.  The  members  of  the  Boards  of  Appeal  may  not  be  removed  from  office  unless  there  are 
serious grounds for such removal and the Court of Justice, after the case has been referred to 
it  by  the  Administrative  Board  on  the  recommendation  of  the  President  of  the  Boards  of 
Appeal, after consulting the chairman of the Board to which the member concerned belongs, 
takes a decision to this effect. 

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

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

(cid:208) 40/94 

Article 137 

Exclusion and objection 

1.  Examiners  and  members  of  the  Divisions  set  up  within  the  Office  or  of  the  Boards  of 
Appeal may not take part in any proceedings if they have any personal interest therein, or if 
they have previously been involved as representatives of one of the parties. Two of the three 
members  of  an  Opposition  Division  shall  not  have  taken  part  in  examining  the  application. 
Members  of  the  Cancellation  Divisions  may  not  take  part  in  any  proceedings  if  they  have 
participated in the final decision on the case in the proceedings for registration or opposition 
proceedings.  Members  of  the  Boards  of  Appeal  may  not  take  part  in  appeal  proceedings  if 
they participated in the decision under appeal. 

2. If, for one of the reasons mentioned in paragraph 1 or for any other reason, a member of a 
Division or of a Board of Appeal considers that he should not take part in any proceedings, he 
shall inform the Division or Board accordingly. 

3. Examiners and members of the Divisions or of a Board of Appeal may be objected to by 
any party  for one  of the reasons mentioned in paragraph 1, or if suspected of  partiality. An 
objection shall not be admissible if, while being aware of a reason for objection, the party has 
taken  a  procedural  step.  No  objection  may  be  based  upon  the  nationality  of  examiners  or 
members. 

4.  The  Divisions  and  the  Boards  of  Appeal  shall  decide  as  to  the  action  to  be  taken  in  the 
cases specified in paragraphs 2 and 3 without the participation of the member concerned. For 
the purposes of taking this decision the member who withdraws or has been objected to shall 
be replaced in the Division or Board of Appeal by his alternate. 

SECTION 5 

BUDGET AND FINANCIAL CONTROL 

Article 138 

Budget Committee 

1. A Budget Committee is hereby set up, attached to the Office. The Budget Committee shall 
have the powers assigned to it in this Section and in Article 38(4). 

2.  Articles  126(6),  127,  128  and  129(1)  to  (4),  (6)  and  (7)  shall  apply  to  the  Budget 
Committee mutatis mutandis. 

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3. The Budget Committee shall take its decisions by a simple majority of the representatives 
of  the  Member  States.  However,  a  majority  of  three-quarters  of  the  representatives  of  the 
Member States shall be required for the decisions which the Budget Committee is empowered 
to take under Articles 38(4), 140(3) and 143. In both cases each Member State shall have one 
vote. 

Article 139 

Budget 

1. Estimates of all the Office's revenue and expenditure shall be prepared for each financial 
year and shall be shown in the Office's budget, and each financial year shall correspond with 
the calendar year. 

2. The revenue and expenditure shown in the budget shall be in balance. 

(cid:208) 1992/2003 Art. 1 pt. 2 

3.  Revenue  shall  comprise,  without  prejudice  to  other  types  of  income,  total  fees  payable 
under the fees regulations, total fees payable under the Madrid Protocol referred to in Article 
145  for  an  international  registration  designating  the  European  Communities  and  other 
payments made to Contracting Parties to the Madrid Protocol, and, to the extent necessary, a 
subsidy  entered  against  a  specific  heading  of  the  general  budget  of  the  European 
Communities, Commission section. 

(cid:208) 40/94 

Article 140 

Preparation of the budget 

1. The President shall draw up each year an estimate of the Office's revenue and expenditure 
for the following year and shall send it to the Budget Committee not later than 31 March in 
each year, together with a list of posts. 

2. Should the budget estimates provide for a Community subsidy, the Budget Committee shall 
immediately  forward  the  estimate  to  the  Commission,  which  shall  forward  it  to  the  budget 
authority of the Communities. The Commission may attach an opinion on the estimate along 
with an alternative estimate. 

3. The Budget Committee shall adopt the budget, which shall include the Office's list of posts. 
Should the budget estimates contain a subsidy from the general budget of the Communities, 
the Office's budget shall, if necessary, be adjusted. 

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(cid:208) 1653/2003 Art. 1 pt. 2 

Article 141 

Audit and control 

1. An internal audit function shall be set up within the Office, to be performed in compliance 
with  the  relevant  international  standards.  The  internal  auditor,  appointed  by  the  President, 
shall  be  responsible  to  him  for  verifying  the  proper  operation  of  budget  implementation 
systems and procedures of the Office. 

2. The internal auditor shall advise the President on dealing with risks, by issuing independent 
opinions on the quality of management and control systems and by issuing recommendations 
for improving the conditions of implementation of operations and promoting sound financial 
management. 

3. The responsibility for putting in place internal control systems and procedures suitable for 
carrying out his tasks shall lie with the authorising officer. 

(cid:208) 40/94 (adapted) 

Article 142 

Auditing of accounts 

1. Not later than 31 March in each year the President shall transmit to the Commission, the 
European  Parliament,  the  Budget  Committee  and  the  Court  of  Auditors  accounts  of  the 
Office's total revenue and expenditure for the preceding financial year. The Court of Auditors 
shall examine them in accordance with Article ⌦ 248 ⌫ of the Treaty. 

2. The Budget Committee shall give a discharge to the President of the Office in respect of the 
implementation of the budget. 

(cid:208) 40/94 

Article 143 

Financial provisions 

The  Budget  Committee  shall,  after  consulting  the  Court  of  Auditors  of  the  European 
Communities  and  the  Commission,  adopt  internal  financial  provisions  specifying,  in 
particular, the procedure for establishing and implementing the Office's budget. As far as is 
compatible with the particular nature of the Office, the financial provisions shall be based on 
the financial regulations adopted for other bodies set up by the Community. 

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Article 144 

Fees regulations 

1. The fees regulations shall determine in particular the amounts of the fees and the ways in 
which they are to be paid. 

2.  The  amounts  of  the  fees  shall  be  fixed  at  such  a  level  as  to  ensure  that  the  revenue  in 
respect thereof is in principle sufficient for the budget of the Office to be balanced. 

3.  The  fees  regulations  shall  be  adopted  and  amended  in  accordance  with  the  procedure 
⌦ referred to ⌫ in Article (cid:206)1 163(2) . 

(cid:208) 40/94 (adapted) 
(cid:206)1 1992/2003 Art. 1 pt. 7 

(cid:208) 1992/2003 Art. 1 pt. 3 

TITLE XIII 

INTERNATIONAL REGISTRATION OF MARKS 

SECTION I 

GENERAL PROVISIONS 

Article 145 

Application of provisions 

Unless otherwise specified in this title, this Regulation and its Implementing Regulations shall 
apply to applications for international registrations under the Protocol relating to the Madrid 
Agreement  concerning  the  international  registration  of  marks,  adopted  at  Madrid  on 
27 June 1989  (hereafter  referred  to  as  ‘international  applications’  and  ‘the  Madrid  Protocol’ 
respectively), based on an application for a Community trade mark or on a Community trade 
mark and to registrations of marks in the international register maintained by the International 
Bureau of the World Intellectual Property Organisation (hereafter referred to as ‘international 
registrations’  and  ‘the  International  Bureau’,  respectively)  designating  the  European 
Community. 

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SECTION 2 

INTERNATIONAL REGISTRATION ON THE BASIS OF 
APPLICATIONS FOR A COMMUNITY TRADE MARK AND OF 
COMMUNITY TRADE MARKS 

Article 146 

Filing of an international application 

1.  International  applications  pursuant  to  Article  3  of  the  Madrid  Protocol  based  on  an 
application for a Community trade mark or on a Community trade mark shall be filed at the 
Office. 

2.  Where  an  international  application  is  filed  before  the  mark  on  which  the  international 
registration is to be based has been registered as a Community trade mark, the applicant for 
the international registration must indicate whether the international registration is to be based 
on a Community trade mark application or registration. Where the international registration is 
to  be  based  on  a  Community  trade  mark  once  it  is  registered,  the  international  application 
shall  be  deemed  to  have  been  received  at  the  Office  on  the  date  of  registration  of  the 
Community trade mark. 

Article 147 

Form and contents of the international application 

1. The international application shall be filed in one of the official languages of the European 
Community, using a form provided by the Office. Unless otherwise specified by the applicant 
on that form when he files the international application, the Office shall correspond with the 
applicant in the language of filing in a standard form. 

2.  If  the  international  application  is  filed  in  a  language  which  is  not  one  of  the  languages 
allowed  under  the  Madrid  Protocol,  the  applicant  must  indicate  a  second  language  from 
among  those  languages.  This  shall  be  the  language  in  which  the  Office  submits  the 
international application to the International Bureau. 

3. Where the international application is filed in a language other than one of the languages 
allowed  under  the  Madrid  Protocol  for  the  filing  of  international  applications,  the  applicant 
may  provide  a  translation  of  the  list  of  goods  or  services  in  the  language  in  which  the 
international  application  is  to  be  submitted  to  the  International  Bureau  pursuant  to 
paragraph 2. 

4. The Office shall forward the international application to the International Bureau as soon as 
possible. 

5.  The  filing  of  an  international  application  shall  be  subject  to  the  payment  of  a  fee  to  the 
Office. In the cases referred to in the second sentence of Article 146(2), the fee shall be due 

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on the date of registration of the Community trade mark. The application shall be deemed not 
to have been filed until the required fee has been paid. 

6.  The  international  application  must  fulfil  the  relevant  conditions  laid  down  in  the 
Implementing Regulation. 

Article 148 

Recordal in the files and in the Register 

1.  The  date  and  number  of  an  international  registration  based  on  a  Community  trade  mark 
application, shall be recorded in the files of that application. When the application results in a 
Community trade mark, the date and number of the international registration shall be entered 
in the register. 

2.  The  date  and  number  of  an  international  registration  based  on  a  Community  trade  mark 
shall be entered in the Register. 

Article 149 

Request for territorial extension subsequent to the international registration 

A request for territorial extension made subsequent to the international registration pursuant 
to Article 3ter(2) of the Madrid Protocol may be filed through the intermediary of the Office. 
The  request  must  be  filed  in  the  language  in  which  the  international  application  was  filed 
pursuant to Article 147. 

Article 150 

International fees 

Any fees payable to the International Bureau under the Madrid Protocol shall be paid direct to 
the International Bureau. 

SECTION 3 

INTERNATIONAL REGISTRATIONS DESIGNATING THE 
EUROPEAN COMMUNITY 

Article 151 

Effects of international registrations designating the European Community 

1. An international registration designating the European Community shall, from the date of 
its  registration  pursuant  to  Article  3(4)  of  the  Madrid  Protocol  or  from  the  date  of  the 
subsequent designation of the European Community pursuant to Article 3ter(2) of the Madrid 
Protocol, have the same effect as an application for a Community trade mark. 

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2.  If  no  refusal  has  been  notified  in  accordance  with  Article  5(1)  and  (2)  of  the  Madrid 
Protocol  or  if  any  such  refusal  has  been  withdrawn,  the  international registration  of  a  mark 
designating the European Community shall, from the date referred to in paragraph 1, have the 
same effect as the registration of a mark as a Community trade mark. 

3. For the purposes of applying Article 9(3), publication of the particulars of the international 
registration  designating  the  European  Community  pursuant  to  Article  152(1)  shall  take  the 
place  of  publication  of  a  Community  trade  mark  application,  and  publication  pursuant  to 
Article  152(2)  shall  take  the  place  of  publication  of  the  registration  of  a  Community  trade 
mark. 

Article 152 

Publication 

1.  The  Office  shall  publish  the  date  of  registration  of  a  mark  designating  the  European 
Community  pursuant  to  Article  3(4)  of  the  Madrid  Protocol  or  the  date  of  the  subsequent 
designation of the European Community pursuant to Article 3ter(2) of the Madrid Protocol, 
the  language  of  filing  of  the  international  application  and  the  second  language  indicated  by 
the applicant, the number of the international registration and the date of publication of such 
registration in the Gazette published by the International Bureau, a reproduction of the mark 
and  the  numbers  of  the  classes  of  the  goods  or  services  in  respect  of  which  protection  is 
claimed. 

2.  If  no  refusal  of  protection  of  an  international  registration  designating  the  European 
Community has been notified in accordance with Article 5(1) and (2) of the Madrid Protocol 
or if any such refusal has been withdrawn, the Office shall publish this fact, together with the 
number of the international registration and, where applicable, the date of publication of such 
registration in the Gazette published by the International Bureau. 

Article 153 

Seniority 

1.  The  applicant  for  an  international  registration  designating  the  European  Community  may 
claim,  in  the  international  application,  the  seniority  of  an  earlier  trade  mark  registered  in  a 
Member State, including a trade mark registered in the Benelux countries, or registered under 
international arrangements having effect in a Member State, as provided for in Article 34. 

2.  The  holder  of  an  international  registration  designating  the  European  Community  may,  as 
from  the  date  of  publication  of  the  effects  of  such  registration  pursuant  to  Article  152(2), 
claim  at  the  Office  the  seniority  of  an  earlier  trade  mark  registered  in  a  Member  State, 
including a trade mark registered in the Benelux countries, or registered under  international 
arrangements having effect in a Member State, as provided for in Article 35. The Office shall 
notify the International Bureau accordingly. 

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Article 154 

Examination as to absolute grounds for refusal 

1.  International  registrations  designating  the  European  Community  shall  be  subject  to 
examination  as  to  absolute  grounds  for  refusal  in  the  same  way  as  applications  for 
Community trade marks. 

2.  Protection  of  an  international  registration  shall  not  be  refused  before  the  holder  of  the 
international registration has been allowed the opportunity to renounce or limit the protection 
in respect of the European Community or of submitting his observations. 

3. Refusal of protection shall take the place of refusal of a Community trade mark application. 

4. Where protection of an international registration is refused by a decision under this Article 
which has become final or where the holder of the international registration has renounced the 
protection  in  respect  of  the  European  Community  pursuant  to  paragraph  2,  the  Office  shall 
refund the holder of the international registration a part of the individual fee to be laid down 
in the implementing Regulation. 

Article 155 

Search 

1. Once the Office has received a notification of an international registration designating the 
European  Community,  it  shall  draw  up  a  Community  search  report  as  provided  for  in 
Article 38(1). 

2. As soon as the Office has received a notification of an international registration designating 
the  European  Community,  the  Office  shall  transmit  a  copy  thereof  to  the  central  industrial 
property office of each Member State which has informed the Office of its decision to operate 
a search in its own register of trade marks as provided for in Article 38(2). 

3. Article 38(3) to (6) shall apply mutatis mutandis. 

(cid:208) 422/2004 Art. 1 pt. 37 

(cid:208) 1992/2003 Art. 1 pt. 3 

4.  The  Office  shall  inform  the  proprietors  of  any  earlier  Community  trade  marks  or 
Community trade mark applications cited in the Community search report of the publication 
of  the  international  registration  designating  the  European  Community  as  provided  for  in 
Article 152(1). 

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Article 156 

Opposition 

1.  International  registration  designating  the  European  Community  shall  be  subject  to 
opposition in the same way as published Community trade mark applications. 

2. Notice of opposition shall be filed within a period of  three months  which shall  begin six 
months following the date of the publication pursuant to Article 152(1). The opposition shall 
not be treated as duly entered until the opposition fee has been paid. 

3. Refusal of protection shall take the place of refusal of a Community trade mark application. 

4. Where protection of an international registration is refused by a decision under this Article 
which has become final or where the holder of the international registration has renounced the 
protection in respect of the European Community prior to a decision under this Article which 
has become final, the Office shall refund the holder of the international registration a part of 
the individual fee to be laid down in the implementing Regulation. 

Article 157 

Replacement of a Community trade mark by an international registration 

The Office shall, upon request, enter a notice in the Register that a Community trade mark is 
deemed to have been replaced by an international registration in accordance with Article 4bis 
of the Madrid Protocol. 

Article 158 

Invalidation of the effects of an international registration 

1.  The  effects  of  an  international  registration  designating  the  European  Community  may  be 
declared invalid. 

2.  The  application  for  invalidation  of  the  effects  of  an  international  registration  designating 
the European Community shall take the place of an application for a declaration of revocation 
as  provided  for  in  Article  51  or  for  ⌦ a  declaration  of  invalidity ⌫  as  provided  for  in 
Article 52 or Article 53. 

(cid:208) 1992/2003 Art 1. pt. 3 (adapted) 

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(cid:208) 1992/2003 Art. 1. pt. 3 

Article 159 

Conversion of a designation of the European Community through an international 
registration into a national trade mark application or into a designation of Member 
States 

1. Where a designation of the European Community through an international registration has 
been refused or ceases to have effect, the holder of the international registration may request 
the conversion of the designation of the European Community: 

(a) 

(b) 

into a national trade mark application pursuant to Articles 112, 113 and 114;  

into  a  designation  of  a  Member  State  party  to  the  Madrid  Protocol  or  the  Madrid 
Agreement concerning the international registration of marks, adopted at Madrid on 
14  April  1891,  as  revised  and  amended  (hereafter  referred  to  as  the  “Madrid 
Agreement”),  provided  that  on  the  date  when  conversion  was  requested  it  was 
possible to have designated that Member State directly under the Madrid Protocol or 
the Madrid Agreement. Articles 112, 113 and 114 shall apply. 

2.  The  national  trade  mark  application  or  the  designation  of  a  Member  State  party  to  the 
Madrid Protocol or the Madrid Agreement resulting from the conversion of the designation of 
the  European  Community  through  an  international  registration  shall  enjoy,  in  respect  of  the 
Member State concerned, the date of the international registration pursuant to Article 3(4) of 
the  Madrid  Protocol  or  the  date  of  the  extension  to  the  European  Community  pursuant  to 
Article 3ter(2) of the Madrid Protocol if the latter was made subsequently to the international 
registration, or the date of priority of that registration and, where appropriate, the seniority of 
a trade mark of that State claimed under Article 153. 

3. The request for conversion shall be published. 

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Article 160 

Use of a mark subject of an international registration 

For the purposes of applying Article 15(1), Article 42(2), Article 51(1)(a) and Article 57(2), 
the  date  of  publication  pursuant  to  Article  152(2)  shall  take  the  place  of  the  date  of 
registration  for  the  purpose  of  establishing  the  date  as  from  which  the  mark  which  is  the 
subject of an international registration  designating  the European Community must be put to 
genuine use in the Community. 

Article 161 

Transformation 

1.  Subject  to  paragraph  2,  the  provisions  applicable  to  Community  trade  mark  applications 
shall apply mutatis mutandis to applications for transformation of an international registration 
into  a  Community  trade  mark  application  pursuant  to  Article  9quinquies  of  the  Madrid 
Protocol. 

2. When the application for transformation relates to an international registration designating 
the  European  Community  the  particulars  of  which  have  been  published  pursuant  to 
Article 152(2), Articles 37 to 42 shall not apply. 

(cid:208) 40/94 
(cid:206)1 1992/2003 Art. 1 pt. 4 
(cid:206)2 1992/2003 Art. 1 pt. 5 

TITLE (cid:206)1 XIV  

FINAL PROVISIONS 

Article (cid:206)2 162  

Community implementing provisions 

1. The rules implementing this Regulation shall be adopted in an Implementing Regulation. 

2.  In  addition  to  the  fees  provided  for  in  the  preceding  Articles,  fees  shall  be  charged,  in 
accordance with the detailed rules of application laid down in the Implementing Regulation, 
in the cases listed below: 

(a) 

(b) 

(c) 

late payment of the registration fee; 

issue of a copy of the certificate of registration; 

registration of a licence or another right in respect of a Community trade mark; 

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(d) 

(e) 

(f) 

(g) 

(h) 

(i) 

(j) 

(k) 

(l) 

registration of a licence or another right in respect of an application for a Community 
trade mark; 

cancellation of the registration of a licence or another right; 

alteration of a registered Community trade mark; 

issue of an extract from the Register; 

inspection of the files; 

issue of copies of file documents; 

issue of certified copies of the application; 

communication of information in a file; 

review of the determination of the procedural costs to be refunded. 

(cid:208) 40/94 (adapted) 
(cid:206)1 1992/2003 Art. 1 pt. 7 

3. The Implementing Regulation and the rules of procedure of the Boards of Appeal shall be 
in 
adopted  and  amended 
Article (cid:206)1 163(2) . 

the  procedure  ⌦ referred 

in  accordance  with 

to ⌫ 

(cid:208) 807/2003 Art. 3 and Annex III 
pt. 48 
(cid:206)1 1992/2003 Art. 1 pt. 5 

Article (cid:206)1 163  

Establishment of a committee and procedure for the adoption of implementing 
regulations 

1.  The  Commission  shall  be  assisted  by  a  committee  referred  to  as  the  Committee  on  Fees, 
Implementation  Rules  and  the  Procedure  of  the  Boards  of  Appeal  of  the  Office  for 
Harmonisation in the Internal Market (trade marks and designs). 

(cid:208) 807/2003 Art. 3 and Annex III 
pt. 48 (adapted) 

2.  Where 
is  made 
reference 
Decision 1999/468/EC shall apply. 

to 

this  ⌦ paragraph ⌫,  Articles  5  and  7  of 

The period laid down in Article 5(6) of Decision 1999/468/EC shall be set at three months. 

(cid:208) 807/2003 Art. 3 and Annex III 
pt. 48 

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3. The committee shall adopt its rules of procedure. 

(cid:208) 40/94 (adapted) 
(cid:206)1 1992/2003 Art. 1 pt. 5 

Article (cid:206)1 164  

Compatibility with other Community legal provisions 

This  Regulation  shall  not  affect  Council  Regulation  (EC)  No  ⌦ 510/200615 ⌫,  and  in 
particular Article 14 thereof. 

(cid:208) 2003 Act of Accession, Art. 20 
and Annex II, part 4(C)(I) p. 342 
(cid:206)1 422/2004 Art. 1 pt. 36 

Article (cid:206)1 165  

Provisions relating to the enlargement of the Community 

(cid:208) 2005 Act of Accession, Art. 19 
and Annex III, point 1.I, p. 231 
(adapted) 

1.  As  from  the  date  of  accession  of  Bulgaria,  the  Czech  Republic,  Estonia,  Cyprus,  Latvia, 
Lithuania, Hungary, Malta, Poland, Romania, Slovenia and Slovakia (hereinafter referred to 
as ‘new Member State(s)’), a Community trade mark registered or applied for pursuant to this 
Regulation before the respective dates of accession shall be extended to the territory of those 
Member States in order to have equal effect throughout the Community. 

(cid:208) 2003 Act of Accession, Art. 20 
and Annex II, part 4 (C)(I) p. 342 

2.  The  registration  of  a  Community  trade  mark  which  is  under  application  at  the  date  of 
accession may not be refused on the basis of any of the absolute grounds for refusal listed in 
Article  7(1),  if  these  grounds  became  applicable  merely  because  of  the  accession  of  a  new 
Member State. 

3. Where an application for the registration of a Community trade mark has been filed during 
the six months prior to the date of accession, notice of opposition may be given pursuant to 
Article 41 where an earlier trade mark or another earlier right within the meaning of Article 8 
was acquired in a new Member State prior to accession, provided that it was acquired in good 
faith and that the filing date or, where applicable, the priority date or the date of acquisition in 
the new Member State of the earlier trade mark or other earlier right precedes the filing date 
or, where applicable, the priority date of the Community trade mark applied for. 

15 

OJ L 93, 31.3.2006, p. 12. 

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4. A Community trade mark as referred to in paragraph 1 may not be declared invalid: 

(a) 

(b) 

pursuant to Article 52 if the grounds for invalidity became applicable merely because 
of the accession of a new Member State; 

pursuant to Article 53(1) and (2) if the earlier national right was registered, applied 
for or acquired in a new Member State prior to the date of accession. 

5.  The  use  of  a  Community  trade  mark  as  referred  to  in  paragraph  1  may  be  prohibited 
pursuant to Articles 110 and 111, if the earlier trade mark or other earlier right was registered, 
applied for or acquired in good faith in the new Member State prior to the date of accession of 
that State; or, where applicable, has a priority date prior to the date of accession of that State. 

(cid:208)  

Article 166 

Repeal 

Regulation (EC) No 40/94 is repealed. 

References to the repealed Regulation shall be construed as references to this Regulation and 
shall be read in accordance with the correlation table in Annex II. 

(cid:208) 40/94 (adapted) 
(cid:206)1 1992/2003 Art. 1 pt. 5 

Article (cid:206)1 167  

Entry into force 

1. This Regulation shall enter into force on ⌦ 10 March 2008 ⌫ . 

2.  The  Member  States  shall  within 
into  force  of 
⌦ Regulation (EC)  No  40/94 ⌫  take  the  necessary  measures  for  the  purpose  of 
implementing Articles 95 and 114. 

three  years  following  entry 

(cid:208) 40/94 

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

Done at Brussels,  

EN 

For the Council 
The President 

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(cid:207) 

ANNEX I 

Repealed Regulation with list of its successive amendments 

Only point 48 of Annex III 

Council Regulation (EC) No 40/94 
(OJ L 11, 14.1.1994, p. 1) 

Council Regulation (EC) No 3288/94 
(OJ L 349, 31.12.1994, p. 83) 

Council Regulation (EC) No 807/2003 
(OJ L 122, 16.5.2003, p. 36) 

Council Regulation (EC) No 1653/2003 
(OJ L 245, 29.9.2003, p. 36) 

Council Regulation (EC) No 1992/2003 
(OJ L 296, 14.11.2003, p. 1) 

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

Annex II, Part 4 (C)(I) of the 2003 Act of Accession 
(OJ L 236, 23.9.2003, p. 342) 

Annex III, Point 1.I of the 2005 Act of Accession 
(OJ L 157, 21.6.2005, p. 231) 

_____________ 

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ANNEX II 

CORRELATION TABLE 

Regulation (EC) No 40/94 

This Regulation 

Articles 1 to 36 

Articles 1 to 36 

Article 38 

Article 39 

Article 40 

Article 41 

Article 42 

Article 43 

Article 44 

Article 44a 

Articles 45 to 48 

Article 48a 

Article 49 

Article 50 

Article 51 

Article 52 

Article 53 

Article 54 

Article 55 

Article 56 

Article 57 

Article 58 

Article 59 

Article 60 

Article 37 

Article 38 

Article 39 

Article 40 

Article 41 

Article 42 

Article 43 

Article 44 

Articles 45 to 48 

Article 49 

Article 50 

Article 51 

Article 52 

Article 53 

Article 54 

Article 55 

Article 56 

Article 57 

Article 58 

Article 59 

Article 60 

Article 61 

EN 

91 

   EN 

 
Article 60a 

Article 61 

Article 62 

Article 63 

Article 64 

Article 65 

Article 66 

Article 67 

Article 68 

Article 69 

Article 70 

Article 71 

Article 72 

Article 73 

Article 74 

Article 75 

Article 76 

Article 77 

Article 77a 

Article 78 

Article 78a 

Article 79 

Article 80 

Article 81 

Article 82 

Article 83 

Article 84 

Article 62 

Article 63 

Article 64 

Article 65 

Article 66 

Article 67 

Article 68 

Article 69 

Article 70 

Article 71 

Article 72 

Article 73 

Article 74 

Article 75 

Article 76 

Article 77 

Article 78 

Article 79 

Article 80 

Article 81 

Article 82 

Article 83 

Article 84 

Article 85 

Article 86 

Article 87 

Article 88 

EN 

92 

   EN 

 
Article 85 

Article 86 

Article 87 

Article 88 

Article 89 

Article 90 

Article 91 

Article 92 

Article 93 

Article 89 

Article 90 

Article 91 

Article 92 

Article 93 

Article 94 

Article 95 

Article 96 

Article 97 

Article 94(1), introductory wording 

Article 98(1), introductory wording 

Article 94(1), first indent 

Article 98(1)(a) 

Article 94(1), second indent 

Article 98(1)(b) 

Article 94(2) 

Article 98(2) 

Article 95 

Article 96 

Article 97 

Article 98 

Article 99 

Article 100 

Article 101 

Article 102 

Article 103 

Article 104 

Article 105 

Article 106 

Article 107 

Article 108 

Article 99 

Article 100 

Article 101 

Article 102 

Article 103 

Article 104 

Article 105 

Article 106 

Article 107 

Article 108 

Article 109 

Article 110 

Article 111 

Article 112 

EN 

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Article 109 

Article 110 

Article 111 

Article 112 

Article 113 

Article 114 

Article 115 

Article 116 

Article 117 

Article 118 

Article 118a 

Article 119 

Article 120 

Article 113 

Article 114 

Article 115 

Article 116 

Article 117 

Article 118 

Article 119 

Article 120 

Article 121 

Article 122 

Article 123 

Article 124 

Article 125 

Article 121(1) and (2) 

Article 126(1) and (2) 

Article 121(3) 

Article 121(4) 

Article 121(5) 

Article 121(6) 

Article 122 

Article 123 

Article 124 

Article 125 

Article 126 

Article 127 

Article 128 

Article 129 

Article 130 

- 

Article 126(3) 

Article 126(4) 

Article 126(5) 

Article 127 

Article 128 

Article 129 

Article 130 

Article 131 

Article 132 

Article 133 

Article 134 

Article 135 

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Article 131 

Article 132 

Article 133 

Article 134 

Article 135 

Article 136 

Article 137 

Article 138 

Article 139 

Article 140 

Article 141 

Article 142 

Article 143 

Article 144 

Article 145 

Article 146 

Article 147 

Article 148 

Article 149 

Article 150 

Article 151 

Article 152 

Article 153 

Article 154 

Article 155 

Article 156 

Article 136 

Article 137 

Article 138 

Article 139 

Article 140 

Article 141 

Article 142 

Article 143 

Article 144 

Article 145 

Article 146 

Article 147 

Article 148 

Article 149 

Article 150 

Article 151 

Article 152 

Article 153 

Article 154 

Article 155 

Article 156 

Article 157 

Article 158 

Article 159 

Article 160 

Article 161 

Article 157(1) 

Article 162(1) 

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Article 157(2), introductory wording 

Article 162(2), introductory wording 

Article 157(2)(2) 

Article 157(2)(3) 

Article 157(2)(5) 

Article 157(2)(6) 

Article 157(2)(7) 

Article 157(2)(8) 

Article 157(2)(9) 

Article 157(2)(10) 

Article 157(2)(11) 

Article 157(2)(12) 

Article 157(2)(13) 

Article 157(2)(14) 

Article 157(3) 

Article 158 

Article 159 

Article 162(2)(a) 

Article 162(2)(b) 

Article 162(2)(c) 

Article 162(2)(d) 

Article 162(2)(e) 

Article 162(2)(f) 

Article 162(2)(g) 

Article 162(2)(h) 

Article 162(2)(i) 

Article 162(2)(j) 

Article 162(2)(k) 

Article 162(2)(l) 

Article 162(3) 

Article 163 

Article 164 

Article 159a(1), (2) and (3) 

Article 165(1), (2) and (3) 

Article 159a(4), initial wording 

Article 165(4), initial wording 

Article 159a(4), first indent 

Article 165(4)(a) 

Article 159a(4), second indent 

Article 165(4)(b) 

Article 159a(5) 

- 

Article 165(5) 

Article 166 

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Article 160(1) 

Article 160(2) 

Article 160(3) and (4) 

- 

- 

Article 167(1) 

Article 167(2) 

- 

Annex I 

Annex II 

________________ 

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