Proposal for a REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL amending Council Regulation (EC) No 207/2009 on the Community trade mark
Date: 2013-03-27
Institutions: European Commission
Subjects: EU trade mark, European Union Intellectual Property Office, brand name, registered trade mark, trade-mark law

EUROPEAN 
COMMISSION 

Brussels, 27.3.2013  
COM(2013) 161 final 

2013/0088 (COD) 

Proposal for a 

REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL 

amending Council Regulation (EC) No 207/2009 on the Community trade mark 

(Text with EEA relevance) 

{SWD(2013) 95 final} 
{SWD(2013) 96 final}

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EXPLANATORY MEMORANDUM 

1. 

CONTEXT OF THE PROPOSAL 

1.1. 

General context and grounds for the proposal 

The laws of the Member States relating to trade marks were partially harmonised by Council 
Directive  89/104/EEC  of  21  December  1988,  codified  as  Directive  2008/95/EC  (hereinafter 
referred  to  as  ‘the  Directive’).  Alongside  and  linked  to  the  national  trade  mark  systems, 
Council  Regulation  (EC)  No  40/94  of  20  December  1993  on  the  Community  trade  mark, 
codified  as  Regulation  (EC)  No  207/2009  (hereinafter  referred  to  as  ‘the  Regulation’), 
established  a  stand-alone  system  for  the  registration  of  unitary  rights  having  equal  effect 
throughout  the  EU.  In  that  context  the  Office  for  Harmonization  in  the  Internal  Market 
(OHIM)  was  set  up  to  be  responsible  for  registering  and  administering  Community  trade 
marks.  

A  trade  mark  serves  to  distinguish  the  goods  and  services  of  a  company.  It  is  the  mark 
through which a business can attract and retain customer loyalty, and create value and growth. 
The  mark  works  in  this  case  as  an  engine  of  innovation:  the  necessity  to  keep  it  relevant 
promotes  investments  in  R  &  D,  which  leads  in  turn  to  a  continuous  process  of  product 
improvement  and  development.  This  dynamic  process  also  has  a  favourable  impact  on 
employment. In an increasingly competitive environment, there has been a steady growth not 
only in the crucial role of trade marks for market success, but also in their commercial value 
and number. In 2012, a record number of Community trade mark applications were filed (over 
107,900,  against  98,217  in  2010  and  49,503  a  decade  earlier).  OHIM  also  received  its 
millionth  application  since  starting  operations  in  1996  during  2011.  This  development  has 
been accompanied by growing expectations on the part of stakeholders for more streamlined 
and  high-quality  trade  mark  registration  systems,  which  are  more  consistent,  publicly 
accessible and technologically up-to-date.  

In  2007,  when  addressing  the  issue  of  the  financial  perspectives  of  OHIM,  the  Council1 
emphasised  that  the  establishment  of  OHIM  had  been  a  great  success  and  that  it  had 
contributed substantially to strengthening the competitiveness of the EU. It recalled that the 
Community  trade  mark  system  had  been  designed  to  co-exist  with  the  national  trade  mark 
systems  which  continued  to  be  necessary  for  those  undertakings  which  did  not  want  their 
trade  marks  protected  at  EU  level.  The  Council  further  noted  the  importance  of  the 
complementary  work  of  national  trade  mark  offices,  and  called  on  OHIM  to  expand  its 
cooperation with them in the interest of the overall functioning of the Community trade mark 
system.  Last,  it  acknowledged  that  more  than a  decade  had  passed  since  the  creation  of  the 
Community trade mark, and underlined the need for an overall assessment of the functioning 
of  the  Community  trade  mark  system.  It  invited  the  Commission  to  start  work  on  a 
corresponding  study,  in  particular,  with  a  view  to  intensifying  and  broadening  the  existing 
instruments of cooperation between OHIM and national trade mark offices.  

1 

Competitiveness Council Conclusions of 21 and 22 May 2007, Council document 9427/07. 

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In its 2008 Small Business Act2 the Commission pledged to make the Community trade mark 
system  more  accessible  to  SMEs.  Furthermore,  the  2008  Communication  on  an  Industrial 
Property Rights Strategy for Europe3 underlined the Commission’s commitment to effective 
and efficient trade mark protection and to a trade mark system of high quality. It concluded 
that it was time for an overall evaluation which could form the basis for a future review of the 
trade mark system in Europe and for the further improvement of cooperation between OHIM 
and  National  Offices.  In  2010,  in  the  Communication  on  Europe  2020,  under  the  Flagship 
Initiative  ‘Innovation  Union’,  the  Commission  undertook  to  modernise  the  framework  of 
trade marks in order to improve framework conditions for business to innovate4. Finally, in its 
2011 IPR strategy for Europe5, the Commission announced a review of the trade mark system 
in Europe with a view to modernising the system, both at EU and at national level, by making 
it more effective, efficient and consistent overall.  

1.2. 

Aim of the proposal 

Considered  together  as  a  package,  the  main  common  objective  of  this  initiative  and  of  the 
parallel proposal  for  recast of the Directive is to foster innovation and economic growth by 
making  trade  mark  registration  systems  all  over  the  EU  more  accessible  and  efficient  for 
businesses in terms of lower costs and complexity, increased speed, greater predictability and 
to  ensure  coexistence  and 
legal  security.  These  adjustments  dovetail  with  efforts 
complementarity between the Union and national trade mark systems.  

As  regards  this  initiative  to  revise  the  Regulation,  the  Commission  is  not  proposing  a  new 
system, but well-targeted modernisation of existing provisions, with these main aims: 

• 

• 

• 

• 

• 

Adapting  terminology  to  the  Lisbon  Treaty  and  provisions  to  the  Common 
Approach on decentralised agencies (see section 5.1); 

Streamlining procedures to apply for and register a European trade mark (see 
section 5.2); 

Increasing  legal  certainty  by  clarifying  provisions  and  removing  ambiguities 
(see section 5.3); 

Establishing  an  appropriate  framework  for  cooperation  between  OHIM  and 
national  offices  for  the  promoting  convergence  of  practices  and  developing 
common tools (see section 5.4); 

Aligning the framework to Article 290 of the Treaty on the Functioning of the 
European Union (TFEU) (see section 5.5). 

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5 

Communication  from  the  Commission:  "Think  Small  First",  A  "Small  Business  Act"  for  Europe  - 
COM(2008) 394 final of 25 June 2008. 
COM(2008) 465 final of 16 July 2008. 
COM(2010)546 final of 6 October 2010. 
A  Single  Market  for  Intellectual  Property  Rights:  Boosting  creativity  and  innovation  to  provide 
economic growth, high quality jobs and first class products and services in Europe - COM(2011) 287. 

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2. 

RESULTS  OF  CONSULTATIONS  WITH  INTERESTED  PARTIES  AND 
IMPACT ASSESSMENT 

2.1. 

Public consultation 

This initiative is based on an evaluation of the way the trade mark system works in Europe as 
a whole and of extensive consultations with all major stakeholders involved.  

The main component of the evaluation was a study the Max Planck Institute for Intellectual 
Property  and  Competition  Law  undertook  on  behalf  of  the  Commission.  The  study  was 
carried out between November 2009 and February 20116. In addition to expert analysis, the 
study involved consultations with various stakeholders. It included a survey among users of 
the Community trade mark system, contributions from organisations representing trade mark 
users at national, European and international level and a hearing in June 2010 involving these 
organisations. Lastly, the Institute consulted the National Offices of all the Member States and 
OHIM. 

The Final Report concluded that the basics of the European trade mark system are solid. In 
particular, the procedures followed by OHIM generally met business needs and expectations. 
There  was  further  consensus  that  the  coexistence  of  Community  and  national  trade  mark 
rights is fundamental and necessary for the efficient functioning of a trade mark system that 
meets the requirements of companies of different sizes, markets and geographical needs. The 
Report  nevertheless  found  that  further  convergence  of  trade  mark  laws  and  practices  in  the 
EU was required. It confirmed that many aspects of the current Community trade mark system 
were  working  well,  and  made  a  large  number  of  proposals  for  improvement.  It  identified 
specific areas in which the OHIM and National Offices could enhance their cooperation. 

Responding to the interim results of the study, the Council adopted Conclusions on 25 May 
20107. These endorsed the agreement reached in September 2008 within the OHIM governing 
bodies  (Administrative  Board  and  Budget  Committee)  on  a  set  of  budgetary  measures 
intended  to  better  balance  OHIM's  budget  in  the  future.  The  Council  agreed  that  these 
budgetary  measures  also  contributed  to  modernising,  streamlining,  harmonising  and 
strengthening  the  trade  mark  system  in  Europe  as  a  whole.  It  called  on  the  Commission  to 
include  in  the  revision  the  introduction  of  a  specific  provision  to  define  the  framework  for 
cooperation between OHIM and the National Offices. This should make explicit that all EU 
trade  mark  offices  should  pursue  harmonisation  of  practices  and  that  the  OHIM  should 
facilitate their efforts to this end. It also called for the creation of a legal basis for distributing 
an  amount  equal  to  50%  of  OHIM’s  renewal  fees  to  National  Offices  to  be  used  for 
protecting, promoting and/or enforcing trade marks. 

As a follow-up to the study, the Commission services convened a hearing of user associations 
on 26 May 2011. The results shaped and confirmed the Commission’s preliminary analysis.  

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the 

final 

See 
http://ec.europa.eu/internal_market/indprop/tm/index_en.htm. 
Competitiveness Council Conclusions of 25 May 2010 on the future revision of the Trade Mark system 
in the EU, OJ C 140, 29.5.2010, p.22. 

including 

annexes, 

study, 

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2.2. 

Impact Assessment 

The impact assessment identified one main problem the revised Regulation needs to address: 
the low level of cooperation among trade mark offices in Europe. As explained in the impact 
assessment, there are many links between the Community trade mark and national trade mark 
regimes, with direct consequences for both trade mark users and intellectaul property offices. 
These  require  a  certain  level  of  complementarity  between  the  two  systems.  To  achieve  and 
ensure this, OHIM and National Offices should cooperate closely.  

Efficient  and  effective  cooperation  between  trade  mark  offices  in  Europe  is  currently 
seriously hindered by a number of obstacles:  

• 

• 

• 

Lack of a clear legal basis for cooperation on EU trade mark legislation 

Lack of technical facilities in National Offices 

Lack of sustainable financing in the medium to long term.  

The  following  options  were  considered  to  solve  these  problems  and  to  achieve  three 
corresponding objectives.  

1. 

Providing an adequate legal basis for cooperation: 

(a)  Option 1: No specific legal basis for cooperation between intellectual property 

offices in Europe; 

(b)  Option 2: Legal basis allowing National Offices and OHIM to cooperate with 

one another (optional cooperation); 

(c)  Option 3: Legal basis obliging National Offices and OHIM to cooperate with 

one another (mandatory cooperation). 

2. 

Technical capacity building at National Offices: 

(a)  Option 1: Each office to procure and develop the required facilities and tools; 

(b)  Option 2: Optional access to tools: the required facilities and tools accessible to 

IP offices within a framework of voluntary cooperation; 

(c)  Option 3: Mandatory access to tools: the required facilities accessible through a 
compulsory cooperation framework. This option overlaps with option 3 above 
regarding an adequate legal basis and option 3 below on long-term financing of 
cooperation activities. 

3. 

Securing long-term financing for cooperation activities: 

(a)  Option 1: Financing from Member States; 

(b)  Option 2: Financing from EU budget; 

(c)  Option 3: Financing from OHIM budget. 

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The impact assessment concluded that option 3 would in all cases be proportionate and best 
suited to achieving the objectives pursued. 

3. 

LEGAL BASIS AND SUBSIDIARITY 

In  the  context  of  the  establishment  and  functioning  of  the  internal  market,  Article  118(1) 
TFEU  provides  for  the  creation  of  European  intellectual  property  rights  to  provide  uniform 
protection for these rights throughout the EU, including the setting up of centralised Union-
wide authorisation, coordination and supervision arrangements. 

The Community trade mark is a self-standing EU intellectual property title created by an EU 
Regulation. The analysis carried out as part of the impact assessment proved that parts of the 
Regulation need to be changed to improve and streamline the Community trade mark system. 
Only the EU legislator has the competence to make the amendments needed. 

4. 

BUDGETARY IMPLICATION 

The  proposal  will  not  have  an  impact  on  the  European  Union  budget  and  is  therefore  not 
accompanied by the financial statement required under Article 31 of the Financial Regulation 
(Regulation (EC, Euratom) No 966/2012 of the European Parliament and of the Council of 25 
October  2012  on  the  financial  rules  applicable  to  the  general  budget  of  the  Union  and 
repealing Council Regulation (EC, Euratom) No 1605/2002). 

5. 

DETAILED EXPLANATION OF THE PROPOSAL 

The proposed amendments to the Regulation are presented according to the objectives set out 
in section 1.2 above. 

5.1. 

Adaptation  of  terminology  and  Common  approach  on  Union  decentralised 
agencies 

As  a  consequence  of  the  entry  into  force  of  the  Lisbon  Treaty,  the  terminology  of  the 
Regulation  is  updated.  This  means  changing  ‘Community  trade  mark’  to  ‘European  trade 
mark’. 

There is a range of measures to improve the governance and efficiency of existing agencies 
and agencies yet to be established in the common approach on decentralised agencies, agreed 
by the European Parliament, the Council and the Commission in July 2012. The Regulation 
needs  to  be  adapted  to  take  into  account  the  common  approach  as  regards  its  provisions  on 
OHIM. Regarding the name of the agency, it is proposed to rename it as the ‘European Union 
Trade Marks and Designs Agency’ (hereinafter ‘the Agency’), to enhance the functions of its 
Management  Board,  to  align  selection  procedures  for  senior  officials  and  to  provide  for 
annual and multi-annual work programmes and regular evaluations.  

5.2. 

Streamlining procedures 

- Filing of applications (Article 25) 

National Offices hardly ever receive applications for European trade marks any more. Almost 
all applications (96,3% in 2012) are now directly filed through the OHIM’s e-filing system. In 

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the light of this situation, given that applications can now easily be filed on line, the option for 
filing these at National Offices should be abolished.  

- Filing date (Article 27) 

Most European trade mark applications are nowadays examined before the expiry of the one-
month period before applicants have to pay the application fee. This allows applicants to file 
‘test applications’ and not to pay the fee if a deficiency or objection is raised by the Agency. 
Payments via current accounts are deemed to be have been made on the last day of the month, 
if applicants so wish. Article 27 is therefore amended to abolish the one-month period and to 
link the ‘obligation’ to pay with the filing of the application, so that applicants will have to 
provide  evidence  that  they  submitted  or  authorised  their  payment  when  they  filed  their 
application.  

- Searches (Articles 38 and 155) 

The present regimes on searches provide neither a reliable trade mark clearance tool, nor fully 
comprehensive monitoring of the Register. The weaknesses of national and EU searches have 
become  more  acute  over  time,  while  IT  advances  nowadays  mean  users  can  have  access  to 
better, faster and cheaper alternatives. Applicants now have very little interest in obtaining the 
results  of  national  searches  from  National  Offices  taking  part  in  the  optional  system.  The 
Agency  is  in  the  process  of  developing,  together  with  National  Offices,  a  number  of 
promising tools that offer far better means of conducting priority searches and monitoring the 
registry for infringements. Current search regimes are therefore abolished. 

- Publication of the application (Article 39) 

Abolishing  the  search  system  will  also  make  it  possible  to  abolish  the  current  one-month 
period  between  the  Agency  notifying  the  applicant  of  search  reports  and  publication  of  the 
application. This will speed up the registration procedure.  

- Observations by third parties (Article 40) 

To  facilitate  the  submission  of  observations  by  third  parties,  Article  40  is  amended  by 
extending  the  period  over  which  observations  can  be  filed.  The  reference  to  the  publication 
date  is  to  be  deleted,  taking  into  account  that  European  trade  mark  applications  are  already 
made available to the public in the Agency’s trade mark database ‘CTM online’ within a few 
days  of  filing.  To  streamline  proceedings,  third  parties  will  be  given  the  opportunity  to  file 
observations  as  soon  as  they  become  aware  of  an  application.  The  deadline  for  filing 
observations will be at the end of the opposition period or once opposition proceedings have 
concluded, following current Agency practice.  

- Revision of decisions inter partes (Article 62) 

Article 62 has turned out to be of no practical relevance. Not a single inter partes decision has 
been  revised  under  this  provision  to  date.  The  main  reason  is  that  the  other  party  has  no 
interest  in  giving  the  approval  required  by  Article  62(2).  Given  that  there  are  sufficient 
remedies to correct an erroneous inter partes decision, Article 62 is deleted.  

- Continuation of proceedings (Article 82) 

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The  application  of  Article  82  has  led  to  some  problems  in  practice  and  gave  rise  to  a 
Communication  of  the  President  of  the  Agency,  No  06/058.  Article  82  is  amended  to 
streamline  its  application  and  to  incorporate  the  contents  of  that  Communication.  As  both 
Article 25(3) and Article 62 are deleted, all mentions of them are also deleted from the list of 
excluded  time  limits.  The  mention  of  Article  42  is  also  deleted  to  enable  all  time  limits  in 
opposition proceedings to continue, with the exception of the opposition period laid down in 
Article 41(1) and the period for payment of the opposition fee set out in Article 41(3).  

- Opposition period for International Registrations (Article 156) 

As there is no need to maintain the six-month-long period currently provided for, Article 156 
is amended to shorten the time between publication under Article 152(1) and the start of the 
opposition period for international registrations to one month. 

5.3. 

Increasing legal certainty 

- Definition of a European trade mark (Article 4) 

Article 4 is amended to remove the requirement of ‘graphic representability’. The prerequisite 
that it should be possible to produce a graphic representation of the sign applied for is out of 
date. It creates a great deal of legal uncertainty with regard to certain non-traditional marks, 
such as mere sounds. In the latter cases, representation by other than graphical means (e.g. by 
a  sound  file)  may  even  be  preferable  to  graphic  representation,  if  it  permits  a  more  precise 
identification  of  the  mark  and  thereby  serves  the  aim  of  enhanced  legal  certainty.  The 
proposed new definition leaves the door open to registering matter that can be represented by 
technological  means  offering  satisfactory  guarantees.  The  idea  is  not  to  go  for  a  boundless 
extension of the admissible ways to represent a sign but to provide for more flexibility in that 
respect while ensuring greater legal certainty. 

- Protection of geographical indications and traditional terms (Article 7) 

Article 7(1)(j) and (k) do not offer the same degree of protection to geographical indications 
as provided in the following: 

• 

• 

• 

Articles 13 and 14 of Regulation (EU) No 1151/2012 of 21 November 2012 on 
quality schemes for agricultural products and foodstuffs9; 

Articles 118l and 118m of Regulation (EC) No 1234/2007 of 22 October 2007 
establishing  a  common  organisation  of  agricultural  markets  and  on  specific 
provisions for certain agricultural products, as amended by Regulation (EC) No 
491/2009 of 25 May 200910; 

Article  16  of  Regulation  (EC)  No  110/2008  of  15  January  2008  on  the 
protection of geographical indications of spirit drinks11.  

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OJ OHIM 2005, p. 1402. 
OJ L 343, 14.12.2012, p. 1. 
OJ L 154, 17.6.2009, p. 1. 
OJ L 39, 13.2.2008, p. 16. 

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To ensure that EU law protecting geographical indications is given full effect in proceedings 
relating to the registration of European trade marks, the relevant absolute grounds for refusal 
are  fully  aligned  with  the  EU  law  on  geographical  indications  and  streamlined  in  the 
Regulation.  Moreover,  for  reasons  of  coherence,  grounds  for  refusal  are  extended  to  cover 
protected traditional terms for wine and traditional specialities guaranteed.  

- Rights conferred by a European trade mark (Articles 9 and 9a) 

1. 

Rights conferred without prejudice to prior rights 

Neither  the  Regulation  nor  the  Directive  contains  a  clear  rule  stating  that  the  trade  mark 
proprietor cannot successfully invoke his rights against the use of an identical or similar sign 
which  is  already  the  subject  of  an  earlier  right.  In  line  with  Article  16(1)  of  the  TRIPS 
Agreement12,  Article  9  of  the  Regulation  is  amended  to clarify that infringement claims are 
without prejudice to earlier rights. 

2. 

Cases of double identity 

The  recognition  of  additional  trade  mark  functions  under  Article  5(1)(a)  of  the  Directive 
(Article 9(1)(a) of the Regulation) has created legal uncertainty. In particular, the relationship 
between  double  identity  cases  and  the  extended  protection  afforded  by  Article  5(2)  of  the 
Directive (Article 9(1)(c) of the Regulation) to trade marks having a reputation has become 
unclear13. In the interest of legal certainty and consistency, it is clarified that in cases of both 
double identity under Article 9(1)(a) and similarity under Article 9(1)(b) it is only the origin 
function which matters. 

3. 

Use as a trade or company name 

According  to  the  Court  of  Justice14,  Article  5(1)  of  the  Directive  is  applicable  where  the 
public considers the use of a company name as (also) relating to the goods or services offered 
by the company. It is therefore appropriate to treat trade name use of a protected trade mark as 
an infringing act, if the requirements of use for goods or services are met. 

4. 

Use in comparative advertising 

Directive  2006/114/EC  of  12  December  2006  concerning  misleading  and  comparative 
advertising15  regulates  the  conditions  under  which  advertising,  which  explicitly  or  by 
implication  identifies  a  competitor  or  goods  or  services  offered  by  a  competitor,  is 
permissible. The relationship of this instrument to the legislation on trade marks has given rise 
to doubts. It is therefore appropriate to clarify that the trade mark owner may prevent the use 
of  his  trade  mark  in  comparative  advertising  where  such  comparative  advertising  does  not 
satisfy the requirements of Article 4 of Directive 2006/114/EC. 

5. 

Consignments from commercial suppliers 

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15 

Agreement on Trade-Related Aspects of Intellectual Property Rights, OJ L 336, 23.12.1994, p. 213. 
Opinion of AG Jääskinen in Case C-323/09, Interflora, para. 9. 
Judgment of 11 September 2007, Case C-17/06, Céline, ECR I-07041. 
OJ L 376, 27.12.2006, p. 21. 

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Amendments are proposed to clarify that goods may not be imported into the EU even if only 
the consignor is acting for commercial purposes. This is to ensure that a trade mark owner has 
the  right  to  prevent  businesses  (whether  located  in  the  EU  or  not)  from  importing  goods 
located  outside  the  EU  that  have  been  sold,  offered,  advertised  or  shipped  to  private 
consumers, and to discourage the ordering and sale of counterfeit goods over the internet.  

6. 

Goods brought into the customs territory 

According  to  the  Court  of  Justice  in  the  Philips/Nokia  judgment16,  the  entry,  presence  and 
movement of non-EU goods in the customs territory of the EU under a suspensive procedure 
does,  under  the  existing  acquis,  not  infringe  intellectual  property  rights  as  conferred  by 
substantive  law  of  the  Union  and  its  Member  States.  Such  goods  can  only  be  classified  as 
counterfeit  once  there  is  proof  that  they  are  subject  of  a  commercial  act  directed  at  EU 
consumers,  such  as  sale,  offer  for  sale or  advertising. The implications of the Philips/Nokia 
judgment have met with strong criticism from stakeholders as placing an inappropriately high 
burden of proof on rights holders, and hindering the fight against counterfeiting. It is evident 
that  there  is  an  urgent  need  to  have  in  place  a  European  legal  framework  enabling  a  more 
effective  fight  against  the  counterfeiting  of  goods  as  a  fast-growing  activity.  It  is  therefore 
proposed  to  fill  the  existing  gap  by  entitling  right  holders  to  prevent  third  parties  from 
bringing  goods,  from  third  countries,  bearing  without  authorization  a  trade  mark  which  is 
essentially identical to  the trade mark registered in respect of those goods, into the customs 
territory of the Union, regardless of whether they are released for free circulation.  

7. 

Preparatory acts 

Neither the Regulation nor the Directive contains any provisions allowing proceedings against 
the distribution and sale of labels and packaging or similar items which may subsequently be 
combined with illicit products. Some national laws have explicit rules covering this activity. 
Including a rule on this in the Regulation and the Directive is appropriate to provide another 
practical, relevant and efficient contribution to the combat against counterfeiting.  

- Limitation of the effects of a European trade mark (Article 12) 

The  limitation  in  Article  12(1)(a)  is  restricted  to  cover  the  use  of  personal  names  only  in 
accordance  with  the  Joint  Statement  of  the  Council  and  the  Commission17.  For  reasons  of 
consistency, the limitation in Article 12(1)(b) is extended to cover the use of non-distinctive 
signs or indications. It is also considered appropriate to provide in Article 12(1)(c) an explicit 
limitation  covering  referential  use  in  general.  Finally,  a  separate  paragraph  clarifies  the 
conditions  under  which  use  of  a  trade  mark  is  not  considered  as  complying  with  honest 
business practices. 

- Designation and classification of goods and services (Article 28) 

Article 28 is amended to provide essential rules concerning the designation and classification 
of goods and services in the Regulation. These rules are introduced into the Directive. They 

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Judgment of 1 December 2011, Cases C-446/09 Philips and C-495/09 Nokia. 
Joint  statements  by  the  Council  and  the  Commission  of  the  European  Communities  entered  in  the 
minutes of the Council meeting, on the first Council Directive approximating the laws of the Member 
States on trade marks adopted on 21 December 1988. 

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follow  the  principles  established  by  the  Court  of  Justice18  according  to  which  goods  and 
services for which protection is sought need to be identified by the applicant with sufficient 
clarity and precision to enable the relevant authorities and businesses to determine the extent 
of protection the trade mark confers. The general indications of the class heading of the Nice 
Classification may be used to identify goods or services provided that such identifications are 
sufficiently clear and precise. The amendment clarifies that the use of general terms has to be 
interpreted  as  including  all  goods  or  services  clearly  covered  by  the  literal  meaning  of  the 
term.  Finally,  the  amendment  allows  proprietors  of  European  trade  marks  which  were  filed 
before  the  date  of  publication  of  the  Agency’s  new  classification  practice19  to  adapt  their 
specifications of goods and services in accordance with the case law of the Court of Justice in 
order  to  ensure  that  the  content  of  the  register  meets  the  requisite  standard  of  clarity  and 
precision. 

- European certification marks (Articles 74b - 74k) 

While  various  national  systems  offer  protection  for  certification  marks,  the  European  trade 
mark  system  currently  provides  only  for  the  registration  of  individual  and  collective  marks. 
Some  public  and  private  bodies  that  do  not  meet  the  conditions  to  be  eligible  to  obtain 
collective trade mark protection also need a system for protection of certification marks at EU 
level. Such a system would also remedy the current imbalance between national systems and 
the European trade mark system. It is proposed to add to the Regulation a specific set of rules 
covering the registration of European certification marks. 

- Tasks of the Agency (Article 123b) 

To  ensure  comprehensive  cover,  legal  certainty  and  greater  transparency,  all  the  Agency’s 
tasks are defined in the new Article 123b, including those which stem from other legal acts 
and are not related to the EU trade mark system.  

5.4. 

Framework for cooperation (Article 123c) 

Article 123c provides a clear framework for mandatory cooperation between the Agency and 
Member  State  intellectual  property  offices  with  the  aim  of  promoting  convergence  of 
practices and the development of common tools. It states that the Agency and Member State 
offices  are  obliged  to  cooperate,  and  stipulates  the  main  areas  for  cooperation  and  specific 
common  projects  of  Union  interest  the  Agency  will  coordinate.  It  further  sets  up  a  funding 
mechanism enabling the Agency to finance those common projects by means of grants. This 
funding  scheme  represents  a  legally  and  financially  feasible  alternative  to  the  approach 
suggested by the Council in its May 2010 Conclusions. 

5.5. 

Alignment to Article 290 TFEU  

The Regulation confers powers on the Commission in order to adopt certain rules. Those rules 
are currently provided in the Commission Regulation (EC) No 2868/95 of 13 December 1995 
implementing  Council  Regulation  (EC)  No  40/94  on  the  Community  trade  mark20, 
Commission  Regulation  (EC)  No  2869/95  of  13  December  1995  on  the  fees  payable  to  the 

18 
19 
20 

Judgment of 19 June 2012, Case C-307/10, ‘IP Translator’. 
Communication No 2/12 of the President of the Office, OJ OHIM 7/2012. 
OJ L 303, 15.12.1995, p. 1. 

EN 

10 

   EN 

                                                 
Office  for  Harmonisation  in  the  Internal  Market21,  and  Commission  Regulation  (EC)  No 
216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the 
Office for Harmonization in the Internal Market22. The entry into force of the Lisbon Treaty 
makes it necessary to align the powers conferred upon the Commission under the Regulation 
to Article 290 of the Treaty (new Articles 24a, 35a, 45a, 49a, 57a, 65a, 74a, 74k, 93a, 114a, 
144a and 161a). 

21 
22 

OJ L 303, 15.12.1995, p. 33. 
OJ L 28, 6.2.1996, p. 11. 

EN 

11 

   EN 

                                                 
2013/0088 (COD) 

Proposal for a 

REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL 

amending Council Regulation (EC) No 207/2009 on the Community trade mark 

(Text with EEA relevance) 

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION, 

Having  regard  to  the  Treaty  on  the  Functioning  of  the  European  Union,  and  in  particular 
Article 118(1) thereof, 

Having regard to the proposal from the European Commission, 

After transmission of the draft legislative act to the national Parliaments, 

Acting in accordance with the ordinary legislative procedure, 

Whereas: 

(1) 

Council  Regulation  (EC)  No  40/94  of  20  December  1993  on  the  Community  trade 
mark1, in 2009 codified as Council Regulation (EC) No 207/2009 of 26 February 2009 
on the Community trade mark2, created a system of trade mark protection specific for 
the European Union which provided for the protection of trade marks at the level of 
the European Union, in parallel to the protection of trade marks available at the level 
of  the  Member  States  according  to  the  national  trade  mark  systems  harmonized  by 
Council Directive 89/104/EEC of  21  December 1988 to approximate the laws  of  the 
Member  States  relating  to  trade  marks3,  codified  as  Directive  2008/95/EC  of  the 
European Parliament and of the Council of 22 October 2008 to approximate the laws 
of the Member States relating to trade marks4.  

(2) 

As  a  consequence  of  the  entry  into  force  of  the  Lisbon  Treaty,  the  terminology  of 
Regulation  (EC)  No  207/2009  should  be  updated.  This  implies  the  replacement  of 
'Community trade mark' by 'European trade mark'. In line with the Common approach 
on  decentralised  Agencies,  agreed  in  July  2012  by  the  European  Parliament,  the 
Council  and  the  Commission,  the  name  'Office  for  Harmonisation  in  the  Internal 

1 
2 
3 
4 

OJ C 146 E, 12.6.2008, p. 79. 
OJ L 78, 24.3.2009, p. 1. 
OJ L 40, 11.2.1989, p. 1. 
OJ L 299, 8.11.2008, p. 25. 

EN 

1 

   EN 

                                                 
(3) 

(4) 

(5) 

(6) 

Market  (trade  marks  and  designs)  '  should  be  replaced  by  'European  Union  Trade 
Marks and Designs Agency' (hereinafter 'the Agency'). 

Further  to  the  Commission’s  Communication  of  16  July  2008  on  an  Industrial 
Property  Rights  Strategy  for  Europe5,  the  Commission  carried  out  a  comprehensive 
evaluation of the overall functioning of the trade mark system in Europe as a whole, 
covering Union and national levels and the interrelation between each other. 

In its conclusions of 25 May 2010 on the future revision of the Trade Mark system in 
the European Union6, the Council called on the Commission to present proposals for 
the revision of Regulation (EC) No 207/2009 and Directive 2008/95/EC. 

The experience acquired since the establishment of the Community trade mark system 
has  shown  that  undertakings  from  within  the  Union  and  from  third  countries  have 
accepted  the  system,  which  has  become  a  successful  and  viable  alternative  to  the 
protection of trade marks at the level of the Member States. 

National  trade  marks  continue  nevertheless  to  be  necessary  for  those  undertakings 
which do not want protection of their trade marks at Union level or which are unable 
to obtain Union-wide protection while national protection does not face any obstacles. 
It should be left to the decision of each person seeking trade mark protection whether 
the protection is sought only as a national mark in one or more Member States, or only 
as a European trade mark, or both. 

(7)  While the evaluation of the overall functioning of the Community trade mark system 
confirmed  that many aspects of that system, including the fundamental principles on 
which it is based, have stood the test of time and continue meeting business needs and 
expectations, the Commission concluded in its Communication ‘A Single Market for 
Intellectual Property Rights’ of 24 May 20117 that there is a necessity to modernise the 
trade mark system in the Union by making it more effective, efficient and consistent as 
a whole and adapting it to the Internet era.  

(8) 

(9) 

In  parallel  to  the  improvements  and  amendments  of  the  Community  trade  mark 
system,  national  trade  mark  laws  and  practices  should  be  further  harmonised  and 
brought in line with the Union trade mark system to the extent appropriate in order to 
create  as  far  as  possible  equal  conditions  for  the  registration  and  protection  of  trade 
marks throughout the Union. 

In order to allow for more flexibility while ensuring greater legal certainty with regard 
to  the  means  of  representation  of  trade  marks,  the  requirement  of  graphic 
representability should be deleted from the definition of a European trade mark. A sign 
should be permitted to be represented in any appropriate form, and thus not necessarily 
by graphic means, as long as the representation enables the competent authorities and 
the  public  to  determine  with  precision  and  clarity  the  precise  subject  matter  of 
protection. 

5 
6 
7 

COM(2008) 465. 
OJ C 140, 29.5.2010, p. 22. 
COM(2011) 287. 

EN 

2 

   EN 

                                                 
(10)  The current provisions of Regulation (EC) No 207/2009 fall short of offering the same 
degree  of  protection  to  designations  of  origin  and  geographical  indications  as  other 
instruments of Union law. It is therefore necessary to clarify the absolute grounds for 
refusal  concerning  designations  of  origin  and  geographical  indications  and  to  ensure 
full  consistency  with  relevant  Union  legislation  providing  for  protection  of  those 
intellectual property titles. For reasons of coherence with other Union legislation, the 
scope of those absolute grounds should be extended to cover also protected traditional 
terms for wine and traditional specialities guaranteed. 

(11)  Trade marks applied for in a script or language not intelligible in the Union should not 
deserve protection if their registration would have to be refused on absolute grounds 
when translated or transcribed in any official language of the Member States. 

(12) 

It is appropriate to make the dishonest appropriation of trade marks more difficult by 
extending  the  possibilities  to  oppose  European  trade  mark  applications  filed  in  bad 
faith. 

(13)  With the aim of maintaining strong protection of rights in designations of origin and 
geographical indications protected at Union level, it is necessary to clarify that those 
rights entitle  to bring an opposition against  the registration of a later European trade 
mark, regardless of whether or not  they are  also grounds for refusal to be taken into 
account ex officio by the examiner. 

(14) 

In  order  to  ensure  legal  certainty  and  full  consistency  with  the  principle  of  priority, 
under  which  an  earlier  registered  trade  mark  takes  precedence  over  later  registered 
trade marks, it is necessary to lay down that the enforcement of rights conferred by a 
European trade mark should be without prejudice to the rights of proprietors acquired 
prior  to  the  filing  or  priority  date  of  the  European  trade  mark.  This  is  in  conformity 
with  Article  16(1)  of  the  Agreement  on  trade  related  aspects  of  intellectual  property 
rights of 15 April 19948.  

(15) 

In order to ensure legal certainty and clarity, it is necessary to clarify that not only in 
the  case  of  similarity  but  also  in  case  of  an  identical  sign  being  used  for  identical 
goods or services, protection should be granted to a European trade mark only if and to 
the extent that the main function of the European trade mark, which is to guarantee the 
commercial origin of the goods or services, is adversely affected. 

(16)  Confusion as to the commercial source from which the goods or services emanate may 
occur when a company uses the same or a similar sign as a trade name in a way that a 
link is established between the company bearing the name and the goods or services 
coming from that company. Infringement of a European trade mark should therefore 
also comprise the use of the sign as a trade name or similar designation as long as the 
use is made for the purposes of distinguishing goods or services as to their commercial 
origin. 

(17) 

In order to ensure legal certainty and full consistency with specific Union legislation, 
it  is  appropriate  to  provide  that  the  proprietor  of  a  European  trade  mark  should  be 

8 

OJ L 336, 23.12.1994, p. 214. 

EN 

3 

   EN 

                                                 
entitled to prohibit a third party from using a sign in a comparative advertising where 
such  comparative  advertising  is  contrary  to  Directive  2006/114/EC  of  the  European 
Parliament  and  of  the  Council  of  12  December  2006  concerning  misleading  and 
comparative advertising9.  

(18)  With  the  aim  of  strengthening  trade  mark  protection  and  combatting  counterfeiting 
more effectively, the proprietor of a European trade mark should be entitled to prevent 
third parties from bringing goods into the customs territory of the Union without being 
released  for  free  circulation  there,  where  such  goods  come  from  third  countries  and 
bear without authorization a trade mark which is essentially identical to the European 
trade mark registered in respect of such goods. 

(19) 

In order to more effectively prevent the entry of infringing goods, particularly in the 
context  of  sales  over  the  Internet,  the  proprietor  should  be  entitled  to  prohibit  the 
importing  of such  goods into the Union, where it is only the consignor of the goods 
who acts for commercial purposes. 

(20) 

In  order  to  enable  proprietors  of  European  trade  marks  to  fight  counterfeiting  more 
effectively,  they  should  be  entitled  to  prohibit  the  affixing  of  an  infringing  mark  to 
goods and preparatory acts prior to the affixing. 

(21)  The  exclusive  rights  conferred  by  a  European  trade  mark  should  not  entitle  the 
proprietor  to  prohibit  the  use  of  signs  or  indications  which  are  used  fairly  and  in 
accordance  with  honest  practices  in  industrial  and  commercial  matters.  In  order  to 
create equal conditions for trade names and trade marks in case of conflicts against the 
background that trade names are regularly granted unrestricted protection against later 
trade marks, such use should be considered to include the use of one’s own personal 
name only. It should further include the use of descriptive or non-distinctive signs or 
indications in general. Moreover, the proprietor should  not be entitled to prevent the 
general fair and honest use of the European trade mark for identifying or referring to 
the goods or services as those of the proprietor. 

(22) 

In  order  to  ensure  legal  certainty  and  safeguard  trade  mark  rights  legitimately 
acquired, it is appropriate and necessary to lay down, without affecting the principle 
that  the  later  trade  mark  cannot  be  enforced  against  the  earlier  trade  mark,  that 
proprietors of European trade marks should not be entitled to oppose the use of a later 
trade  mark  when  the  later  trade  mark  was  acquired  at  a  time  when  the  earlier  trade 
mark could not be enforced against the later trade mark. 

(23)  For reasons of equity and legal certainty the use of a European trade mark in a form 
differing  in  elements  which  do  not  alter  the  distinctive  character  of  the  mark  in  the 
form  in  which  it  is  registered  should  be  sufficient  to  preserve  the  rights  conferred 
regardless of whether the trade mark in the form as used is also registered. 

(24)  Regulation  (EC)  No  207/2009  confers  powers  on  the  Commission  in  order  to  adopt 
rules  implementing  that  Regulation.  As  a  consequence  of  the  entry  into  force  of  the 
Lisbon Treaty, the powers conferred upon the Commission under Regulation (EC) No 

9 

OJ L 376, 27.12.2006, p. 21. 

EN 

4 

   EN 

                                                 
(25) 

(26) 

207/2009  need  to  be  aligned  to  Article  290  of  the  Treaty  on  the  Functioning  of  the 
European Union. 

It is of particular importance that the Commission carry out appropriate consultations 
during  its  preparatory  work,  including  at  expert  level.  The  Commission,  when 
preparing  and  drawing-up  delegated  acts,  should  ensure  a  simultaneous,  timely  and 
appropriate  transmission  of  relevant  documents  to  the  European  Parliament  and 
Council. 

In order to ensure the efficient registration of legal acts concerning the European trade 
mark  as  object  of  property  and  ensure  full  transparency  of  the  register  of  European 
trade marks, the power to adopt delegated acts in accordance with Article 290 of the 
Treaty  should  be  delegated  to  the  Commission  in  respect  of  specifying  certain 
obligations  of  the  applicant  regarding  specific  trade  marks,  the  details  on  the 
procedures for entering the transfer of European trade marks, the creation and transfer 
of a  right in rem,  the levy of execution, the involvement in an insolvency procedure 
and the grant or transfer of a licence in the Register and for cancelling or modifying 
relevant entries. 

(27) 

In  view  of  the  gradual  decline  and  insignificant  number  of  Community  trade  mark 
applications filed at the central intellectual property offices of the Member States ('the 
offices of the Member States'), it should be only allowed to file a European trade mark 
application at the Agency. 

(28)  European  trade  mark  protection  is  granted  in  relation  to  specific  goods  or  services 
whose nature and number determine the extent of protection afforded to the trade mark 
owner. It is therefore essential to establish rules for the designation and classification 
of goods and services in Regulation (EC) No  207/2009  and  to  ensure  legal  certainty 
and  sound  administration  by  requiring  that  the  goods  and  services  for  which  trade 
mark  protection  is  sought  are  identified  by  the  applicant  with  sufficient  clarity  and 
precision to enable the competent authorities and economic operators, on the basis of 
the application alone, to determine the extent of the protection applied for. The use of 
general  terms  should  be  interpreted  as  including  only  all  goods  and  services  clearly 
covered by the literal meaning of the term. Proprietors of European trade marks, which 
because of the previous practice of the Agency are registered in respect of the entire 
heading of a class of the Nice Classification, should be given the possibility to adapt 
their  specifications  of  goods  and  services  in  order  to  ensure  that  the  content  of  the 
register  meets  the  requisite  standard  of  clarity  and  precision  in  accordance  with  the 
case law of the Court of Justice of the European Union.  

(29) 

In  order  to  provide  for  an  effective  and  efficient  regime  for  the  filing  of  European 
trade  mark  applications  including  priority  and  seniority  claims,  the  power  to  adopt 
delegated acts in accordance with Article 290 of the Treaty should be delegated to the 
Commission  in  respect  of  specifying  the  means  and  modalities  of  filing  a  European 
trade mark application, the details regarding the formal conditions of a European trade 
mark application, the content of that application, the type of application fee, as well as 
the  details  on  the  procedures  for  ascertaining  reciprocity,  claiming  the  priority  of  a 
previous application, an exhibition priority and the seniority of a national trade mark. 

EN 

5 

   EN 

(30)  The  current  regime  of  European  trade  mark  and  national  searches  is  neither  reliable 
nor  efficient.  It  should  therefore  be  replaced  by  the  making  available  of  all-
encompassing, fast and powerful search engines for the free use of the public within 
the context of cooperation between the Agency and the offices of the Member States. 

(31) 

(32) 

(33) 

(34) 

In order to ensure an effective, efficient and expeditious examination and registration 
of  European  trade  mark  applications  by  the  Agency  using  procedures  which  are 
transparent,  thorough,  fair  and  equitable,  the  power  to  adopt  delegated  acts  in 
accordance with Article 290 of the Treaty should be delegated to the Commission in 
respect  of  specifying  the  details  on  the  procedures  related  to  the  examination  of 
compliance with the requirements on the filing date and with the formal conditions of 
an application, the procedures for verifying payment of class fees and the examination 
of  absolute  grounds  for  refusal,  the  details  concerning  the  publication  of  the 
application,  the  procedures  for  correcting  mistakes  and  errors  in  publications  of 
applications,  the  details  on  the  procedures  related  to  third  party  observations,  the 
details  on  the  opposition  procedure,  the  details  on  the  procedures  for  filing  and 
examining  an  opposition  and  those  governing  the  amendment  and  division  of  the 
application, the particulars to be recorded in the Register when registering a European 
trade  mark,  the  modalities  of  publication  of  the  registration  and  the  content  and 
modalities of issue of a certificate of registration. 

In  order  to  allow  European  trade  marks  to  be  renewed  in  an  effective  and  efficient 
manner  and  to  safely  apply  the  provisions  on  the  alteration  and  the  division  of  a 
European  trade  mark  in  practice  without  compromising  legal  certainty,  the  power  to 
adopt delegated acts in accordance with Article 290 of the Treaty should be delegated 
to  the  Commission  in  respect  of  specifying  the  modalities  for  the  renewal  of  a 
European  trade  mark  and  procedures  governing  the  alteration  and  division  of  a 
European trade mark.  

In  order  to  permit  the  proprietor  of  a  European  trade  mark  to  easily  surrender  a 
European trade mark, while respecting the rights of third parties entered in the register 
in relation to that mark, and to ensure that a European trade mark can be revoked or 
declared invalid in an effective and efficient way by means of transparent, thorough, 
fair and equitable procedures, and to take into account the principles laid down in this 
Regulation,  the  power  to  adopt  delegated  acts  in  accordance  with  Article  290  of  the 
Treaty should be delegated to the Commission in respect of specifying the procedure 
governing  the  surrender  of  a  European  trade  mark  as  well  as  the  procedures  for 
revocation and invalidity. 

In  order  to  allow  for  an  effective,  efficient  and  complete  review  of  decisions  of  the 
Agency  by  the  Boards  of  Appeal  by  means  of  a  transparent,  thorough,  fair  and 
equitable  procedure  which  takes  into  account  the  principles  laid  down  in  Regulation 
(EC) No 207/2009, the power to adopt delegated acts in accordance with Article 290 
of  the  Treaty  should  be  delegated  to  the  Commission  in  respect  of  specifying  the 
details  on  the  content  of  the  notice  of  appeal,  the  procedure  for  the  filing  and 
examination of an appeal, the content and form of the Board of Appeal's decisions and 
the reimbursement of the appeal fees. 

(35)  As  a  complement  to  the  existing  provisions  on  Community  collective  marks  and  to 
remedy the current imbalance between national systems and the European trade mark 

EN 

6 

   EN 

system, it is necessary to add a set of specific provisions for the purpose of providing 
protection  to  European  certification  marks  which  allow  a  certifying  institution  or 
organisation to permit adherents to the certification system to use the mark as a sign 
for goods or services complying with the certification requirements.  

(36) 

In  order  to  allow  for  an  effective  and  efficient  use  of  European  collective  and 
certification marks, the power to adopt delegated acts in accordance with Article 290 
of  the  Treaty  should  be  delegated  to  the  Commission  in  respect  of  specifying  the 
periods  for  submitting  the  regulations  governing  the  use  of  those  marks  and  the 
content thereof. 

(37)  The  experience  gained  in  the  application  of  the  current  system  of  Community  trade 
marks  revealed  the  potential  for  improvement  of  certain  aspects  of  procedure. 
Consequently, certain measures should be taken to simplify and speed up procedures 
where appropriate and to enhance legal certainty and predictability where required. 

(38) 

In  order  to  ensure  a  smooth,  effective  and  efficient  operation  of  the  European  trade 
mark system, the power to adopt delegated acts in accordance with Article 290 of the 
Treaty  should  be  delegated  to  the  Commission  in  respect  of  specifying  the 
requirements  as  to  the  form  of  decisions,  the  details  on  oral  proceedings  and  the 
modalities of taking of evidence, the modalities of notification, the procedure for the 
noting of loss of rights, the means of communication and the forms to be used by the 
parties to proceedings, the rules governing the calculation and duration of time limits, 
the  procedures  for  the  revocation  of  a  decision  or  for  cancellation  of  an  entry  in  the 
Register and for the correction of obvious errors in decisions and errors attributable to 
the  Agency,  the  modalities  of  the  interruption  of  proceedings  and  the  procedures 
concerning the apportionment and fixing of costs, the particulars to be entered in the 
Register, the details concerning the inspection and keeping of files, the modalities of 
publications in the European Trade Marks Bulletin and in the Official Journal of the 
Agency,  the  modalities  of  administrative  cooperation  between  the  Agency  and  the 
authorities of Member States, and the details on representation before the Agency.  

(39)  For  reasons  of  legal  certainty  and  greater  transparency,  it  is  appropriate  to  clearly 
define  all  the  tasks  of  the  Agency  including  those  which  are  not  related  to  the 
management of the Union trade mark system. 

(40)  With the aim of promoting convergence of practices and of developing common tools, 
it  is  necessary  to  establish  an  appropriate  framework  for  cooperation  between  the 
Agency and the offices of the Member States, clearly defining the areas of cooperation 
and enabling the Agency to coordinate relevant common projects of Union interest and 
to  finance,  up  to  a  maximum  amount,  those  common  projects  by  means  of  grants. 
Those  cooperation  activities  should  be  beneficial  for  undertakings  using  trade  mark 
systems  in  Europe.  For  users  of  the  Union  regime  laid  down  in  this  Regulation,  the 
common  projects,  particularly  the  databases  for  search  and  consultation  purposes, 
should provide additional, inclusive, efficient and free of charge tools to comply with 
the  specific  requirements  flowing  from  the  unitary  character  of  the  European  trade 
mark. 

EN 

7 

   EN 

(41)  Certain  principles  regarding  the  governance  of  the  Agency  should  be  adapted  to  the 
Common  Approach  on  EU  decentralised  agencies  adopted  by  the  European 
Parliament, the Council and the Commission in July 2012. 

(42) 

(43) 

(44) 

(45) 

In  the  interest  of  greater  legal  certainty  and  transparency,  it  is  necessary  to  update 
some provisions concerning the organization and functioning of the Agency. 

In  the  interest  of  sound  financial  management,  the  accumulation  of  significant 
budgetary  surpluses  should  be  avoided.  This  should  be  without  prejudice  to  the 
Agency  maintaining  a  financial  reserve  covering  one  year  of  its  operational 
expenditure to ensure the continuity of its operations and the execution of its tasks. 

In  order  to  allow  for  an  effective  and  efficient  conversion  of  an  application  or 
registration  of  a  European  trade  mark  into  a  national  trade  mark  application  while 
ensuring  a  thorough  examination  of  the  relevant  requirements,  the  power  to  adopt 
delegated acts in accordance with Article 290 of the Treaty should be delegated to the 
Commission  in  respect  of  specifying  the  formal  conditions  with  which  a  request  for 
conversion must comply and the details of its examination and publication. 

In  order  to  ensure  an  effective  and  efficient  method  to  resolve  disputes,  to  ensure 
consistency with the language regime laid down in Regulation (EC) No 207/2009, the 
expeditious  delivery  of  decisions  on  a  simple  subject  matter,  and  the  effective  and 
efficient  organisation  of  the  Boards  of  Appeal,  and  to  guarantee  an  appropriate  and 
realistic  level  of  fees  to  be  charged  by  the  Agency,  while  complying  with  the 
budgetary  principles  set  out  in  Regulation  (EC)  No  207/2009,  the  power  to  adopt 
delegated acts in accordance with Article 290 of the Treaty should be delegated to the 
Commission in respect of specifying the details on the languages to be used before the 
Agency,  the  cases  where  opposition  and  cancellation  decisions  should  be  taken  by  a 
single member, the details on the organisation of the Boards of Appeal, the amounts of 
the fees to be paid to the Agency and details related to their payment. 

(46) 

In order to ensure the effective and efficient registration of international trade marks in 
full  consistency  with  the  rules  of  the  Protocol  relating  to  the  Madrid  Agreement 
concerning the international registration of marks, the power to adopt delegated acts in 
accordance with Article 290 of the Treaty should be delegated to the Commission in 
respect  of  specifying  the  details  on  the  procedures  concerning  the  international 
registration of trade marks.  

(47)  Regulation (EC) No 207/2009 should therefore be amended accordingly. 

HAVE ADOPTED THIS REGULATION: 

Regulation (EC) No 207/2009 is amended as follows: 

Article 1 

(1) 

(2) 

EN 

In the title, 'Community trade mark' is replaced by 'European trade mark'; 

Throughout  the  Regulation,  the  words  'Community  trade  mark'  are  replaced  by 
'European trade mark' and any necessary grammatical changes are made; 

8 

   EN 

(3) 

(4) 

(5) 

(6) 

Throughout the Regulation, the words ‘Community trade mark court’ are replaced by 
'European trade mark court' and any necessary grammatical changes are made; 

Throughout the Regulation, the words 'Community collective mark' are replaced by 
'European collective mark' and any necessary grammatical changes are made; 

Throughout the Regulation, except in the cases referred to in points (2), (3) and (4), 
the  words  'Community',  'European  Community'  and  'European  Communities'  are 
replaced by ‘Union’ and any necessary grammatical changes are made; 

Throughout  the  Regulation,  the  word  'Office',  insofar  as  it  refers  to  the  Office  for 
Harmonisation  in  the  Internal  Market  (trade  marks  and  designs)  provided  for  in 
Article 2 of the Regulation, is replaced by 'Agency' and any necessary grammatical 
changes are made; 

(7) 

Throughout  the  Regulation,  the  word  'President'  is  replaced  by  'Executive  Director' 
and any necessary grammatical changes are made; 

(8) 

Article 2 is replaced by the following: 

'Article 2 
Agency 

1.  A  European  Union  Trade  Marks  and  Designs  Agency,  hereinafter  referred  to  as 
‘the Agency’, is hereby established. 

2. All references in Union law to the Office for Harmonisation in the Internal Market 
(trade marks and designs) shall be read as references to the Agency.'; 

(9) 

Article 4 is replaced by the following: 

'Article 4 
Signs of which a European trade mark may consist 

A  European  trade  mark  may  consist  of  any  signs,  in  particular  words,  including 
personal names, designs, letters, numerals, colours as such, the shape of goods or of 
their packaging, or sounds, provided that such signs are capable of  

(a)  distinguishing  the  goods  or  services  of  one  undertaking  from  those  of  other 
undertakings; 

(b)  being  represented  in  a  manner  which  enables  the  competent  authorities  and  the 
public to determine the precise subject of the protection afforded to its proprietor.'; 

(10) 

Article 7 is amended as follows: 

(a) 

In paragraph 1, points (j) and (k) are replaced by the following: 

'(j) trade marks which are excluded from registration and shall not continue to 
be used pursuant to Union legislation or international agreements to which the 
Union  is  party,  providing  for  protection  of  designations  of  origin  and 
geographical indications; 

EN 

9 

   EN 

(k)  trade  marks  which  are  excluded  from  registration  pursuant  to  Union 
legislation or international  agreements to which the Union is party,  providing 
for  protection  of  traditional  terms  for  wine  and  traditional  specialities 
guaranteed; 

(l)  trade  marks  which  contain  or  consist  of  an  earlier  variety  denomination 
registered in accordance with Council Regulation (EC) No 2100/94 of 27 July 
1994  on  Community  plant  variety  rights  with  respect  to  the  same  type  of 
product.'; 

(b)  paragraph 2 is replaced by the following: 

'2.  Paragraph  1  shall  apply  notwithstanding  that  the  grounds  of  non-
registrability obtain: 

(a) in only part of the Union; 

(b)  only  where  a  trade  mark  in  a  foreign  language  or  script  is  translated  or 
transcribed in any script or official language of a Member State.'; 

(11) 

Article 8 is amended as follows: 

(a)  paragraph 3 is replaced by the following: 

'3. Upon opposition by the proprietor of the trade mark, a trade mark shall not 
be registered: 

(a) where an agent or representative of the proprietor of the trade mark applies 
for registration thereof in his own name without the proprietor's authorisation, 
unless the agent or representative justifies his action; 

(b)  where  the  trade  mark  is  liable  to  be  confused  with  an  earlier  trade  mark 
protected  outside  the  Union,  provided  that,  at  the  date  of  the  application,  the 
earlier trade mark was still in genuine use and the applicant was acting in bad 
faith.';  

(b) 

in paragraph 4, the introductory phrase is replaced by the following: 

'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 Union legislation providing for protection of designations of origin 
and  geographical  indications,  or  the  law  of  the  Member  State  governing  that 
sign:' 

(c)  paragraph 5 is replaced by the following: 

'5. Upon opposition by the proprietor of an earlier registered trade mark within 
the meaning of paragraph 2, the trade mark applied for shall not be registered 
where  it  is  identical  with,  or  similar  to,  an  earlier  trade  mark  irrespective  of 
whether the goods or services for which it is applied are identical with, similar 

EN 

10 

   EN 

to or not similar to those for which the earlier trade mark is registered, where, 
in the case of an earlier European trade mark, the trade mark has a reputation in 
the Union or, 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.'; 

(12) 

Article 9 is replaced by the following: 

'Article 9 
Rights conferred by a European trade mark 

1. The registration of a European trade mark shall confer on the proprietor exclusive 
rights.  

2. Without prejudice to the rights of proprietors acquired before the filing date or the 
priority  date  of  the  European  trade  mark,  the  proprietor  of  a  European  trade  mark 
shall be entitled to prevent all third parties not having his consent from using in the 
course of trade any sign in relation to goods or services where: 

(a) 

(b) 

(c) 

the  sign  is  identical  with  the  European  trade  mark  and  is  used  in  relation  to 
goods or services which are identical with those for which the European trade 
mark is registered, and where such use affects or is liable to affect the function 
of the European trade mark to guarantee to consumers the origin of the goods 
or services; 

the  sign  is  identical,  or  similar  to,  the  European  trade  mark  and  is  used  for 
goods or services which are identical with or similar to the goods or services 
for which the European trade mark is registered, if 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; 

the sign is identical with, or similar to, the European trade mark irrespective of 
whether  it  is  used  in  relation  to  goods  or  services  which  are  identical  with, 
similar  to  or  not  similar  to  those  for  which  the  European  trade  mark  is 
registered, where the latter has a reputation in the Union 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 European trade mark. 

3. The following, in particular, may be prohibited under paragraph 2: 

(a) 

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

(b)  offering  the  goods,  putting  them  on  the  market  or  stocking  them  for  these 

purposes under that sign, or offering or supplying services thereunder; 

(c) 

importing or exporting the goods under that sign;  

(d)  using the sign as a trade or company name or part of a trade or company name; 

(e)  using the sign on business papers and in advertising; 

EN 

11 

   EN 

(f) 

using  the  sign  in  comparative  advertising  in  a  way  which  is  contrary  to 
Directive 2006/114/EC. 

4.  The  proprietor  of  a  European  trade  mark  shall  also  be  entitled  to  prevent  the 
importing  of  goods  referred  to  in  paragraph  3(c)  where  only  the  consignor  of  the 
goods acts for commercial purposes. 

5. The proprietor of a European trade mark shall also be entitled to prevent all third 
parties from bringing goods, in the context of commercial activity, into the customs 
territory  of  the  Union  without  being  released  for  free  circulation  there,  where  such 
goods, 
third  countries  and  bear  without 
authorization a trade mark which is identical to the European trade mark registered in 
respect of such goods, or which cannot be distinguished in its essential aspects from 
that trade mark.'; 

including  packaging,  come  from 

(13) 

The following Articles 9a and 9b are inserted: 

'Article 9a 
Infringement of the rights of the proprietor by use of get-up, packaging or other 
means 

Where  it  is  likely  that  the  get-up,  packaging  or  other  means  to  which  the  mark  is 
affixed will be used for goods or services and the use in relation to those goods or 
services would constitute an infringement of the rights of the proprietor under Article 
9(2) and (3), the proprietor of a European trade mark shall have the right to prohibit 
the following: 

(a) 

affixing in the course of trade a sign identical with or similar to the European 
trade  mark  on  get-up,  packaging  or  other  means  on  which  the  mark  may  be 
affixed;  

(b)  offering or placing on the market, or stocking for those purposes, or importing 
or exporting get-up, packaging or other means on which the mark is affixed. 

Article 9b 
Date of prevailing of rights against third parties  

1. The rights conferred by a European trade mark shall prevail against third parties 
from the date of publication of the registration of the trade mark.  

2.  Reasonable  compensation  may  be  claimed  in  respect  of  acts  occurring  after  the 
date  of  publication  of  a  European  trade  mark  application,  where  those  acts  would, 
after publication of the registration of the trade mark, be prohibited by virtue of that 
publication.  

3.  The  court  seized  of  a  case  may  not  decide  upon  the  merits  of  the  case  until  the 
registration has been published.'; 

(14) 

Article 12 is replaced by the following: 

EN 

12 

   EN 

'Article 12 
Limitation of the effects of a European trade mark  

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

(a)  his own personal name or address; 

(b) 

(c) 

signs  or  indications  which  are  not  distinctive  or  which  concern  the  kind, 
quality,  quantity,  intended  purpose,  value,  geographical  origin,  the  time  of 
production  of  goods  or  of  rendering  of  the  service,  or  other  characteristics  of 
the goods or services; 

the trade mark for the purpose of identifying or referring to goods or services 
as those of the proprietor of the trade mark, in particular, where the use of the 
trade mark is necessary to indicate the intended purpose of a product or service, 
in particular as accessories or spare parts. 

The first subparagraph shall only apply where the use made by the third party is in 
accordance with honest practices in industrial or commercial matters. 

2. The use by a third party shall be considered not to be in accordance with honest 
practices, in particular in any of the following cases: 

(a) 

(b) 

it gives the impression that there is a commercial connection between the third 
party and the proprietor of the trade mark; 

it takes unfair advantage of, or is detrimental to, the distinctive character or the 
repute of the trade mark without due cause.'; 

(15) 

In  Article  13(1),  the  words  'in  the  Community'  are  replaced  by  'in  the  European 
Economic Area'.; 

(16) 

The following Article 13a is inserted: 

'Article 13a 
Intervening right of the proprietor of a later registered trade mark as defence in 
infringement proceedings  

1. In infringement proceedings, the proprietor of a European trade mark shall not be 
entitled to prohibit the use of a later registered European trade mark where that later 
trade mark shall not be declared invalid pursuant to Articles 53(3) and (4), 54(1) and 
(2) and 57(2). 

2. In infringement proceedings, the proprietor of a European trade mark shall not be 
entitled to prohibit the use of a later registered national trade mark where that later 
registered  national  trade  mark  shall  not  be  declared  invalid  pursuant  to  Articles  8, 
9(1) and (2) and 48(3) of Directive [xxx].  

3. Where the proprietor of a European trade mark shall not be entitled to prohibit the 
use of a later registered trade mark pursuant to paragraphs 1 or 2, the proprietor of 

EN 

13 

   EN 

that later registered trade mark shall not be entitled to prohibit the use of that earlier 
European trade mark in infringement proceedings.'; 

(17) 

In Article 15(1), the second subparagraph is replaced by the following: 

'The following shall also constitute use within the meaning of the first paragraph: 

(a)  use of the European 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,  regardless  of  whether  or  not  the  trade  mark  in  the  form  as  used  is 
also registered; 

(b) 

affixing of the European trade mark to goods or to the packaging thereof in the 
Union solely for export purposes.'; 

(18) 

In Article 16(1), the introductory phrase is replaced by the following: 

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

(19) 

In Article 17, paragraph 4 is deleted; 

(20) 

Article 18 is replaced by the following: 

'Article 18 
Transfer of a trade mark registered in the name of an agent 

1.  Where  a  European  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 of the 
European  trade  mark  in  his  favour,  unless  such  agent  or  representative  justifies  his 
action. 

2. The proprietor may submit a request for assignment pursuant to paragraph 1 to the 
following: 

(a) 

(b) 

the  Agency,  instead  of  an  application  for  a  declaration  of  invalidity  based  on 
Article 53(1)(b); 

a  European  trade  mark  court  as  referred  to  in  Article  95,  instead  of  a 
counterclaim for a declaration of invalidity based on Article 100(1).'; 

(21) 

Article 19 is amended as follows: 

(a)  paragraph 2 is replaced by the following: 

'2. On request of one of the parties, the rights referred to in paragraph 1 or the 
transfer of those rights shall be entered in the Register and published.'; 

(b) 

the following paragraph 3 is added: 

EN 

14 

   EN 

'3. An entry in the Register effected pursuant to paragraph 2 shall be cancelled 
or modified on request of one of the parties.'; 

(22) 

In Article 20, the following paragraph 4 is added: 

'4.  An  entry  in  the  Register  effected  pursuant  to  paragraph  3  shall  be  cancelled  or 
modified on request of one of the parties.'; 

(23) 

In Article 22, the following paragraph 6 is added: 

'6.  An  entry  in  the  Register  effected  pursuant  to  paragraph  5  shall  be  cancelled  or 
modified on request of one of the parties.'; 

(24) 

In Title II, the following Section 5 is inserted: 

'SECTION 5 
Delegation of powers 

Article 24a 
Delegation of powers 

The  Commission  shall  be  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 163 specifying: 

(a) 

(b) 

(c) 

(d) 

(e) 

(f) 

(g) 

the  obligation  of  the  applicant  to  provide  a  translation  or  transcription  as 
referred to in Article 7(2)(b) in the language of the application; 

the  procedure  for  entering  a  transfer  as  referred  to  in  Article  17(5)  in  the 
Register;  

the procedure for entering the creation or transfer of a right in rem as referred 
to in Article 19(2) in the Register;  

the procedure for entering levy of execution as referred to in Article 20(3) in 
the Register; 

the  procedure  for  entering  the  involvement  in  an  insolvency  procedure  as 
referred to in Article 21(3) in the Register; 

the  procedure  for  entering  the  grant  or  transfer  of  a  license  as  referred  to  in 
Article 22(5) in the Register; 

the procedure for cancelling or modifying the entry in the Register of a right in 
rem, levy of execution or a license, as referred to in Articles 19(3), 20(4) and 
22(6) respectively.'; 

(25) 

Article 25 is replaced by the following: 

'Article 25 
Filing of applications 

An application for a European trade mark shall be filed at the Agency.'; 

EN 

15 

   EN 

(26) 

Article 26 is amended as follows: 

(a) 

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

'(d)  a  representation  of  the  mark  which  satisfies  the  requirements  set  out  in 
Article 4(b).'; 

(b)  paragraph 3 is replaced by the following: 

'3.  In  addition  to  the  requirements  referred  to  in  paragraphs  1  and  2,  an 
application for a European trade mark shall comply with the formal conditions 
established  in  accordance  with  Article  35a(b).  If  those  conditions  provide  for 
the  trade  mark  to  be  represented  electronically,  the  Executive  Director  of  the 
Agency  may  determine  the  formats  and  maximum  size  of  such  an  electronic 
file.';  

(27) 

Article 27 is replaced by the following: 

'Article 27 
Date of filing  

The  date  of  filing  of  a  European  trade  mark application  shall be  the date  on which 
documents  containing  the  information  specified  in  Article  26(1)  are  filed  with  the 
Agency  by  the  applicant,  subject  to  payment  of  the  application  fee  for  which  the 
order for payment shall have been given at the latest on that date.'; 

(28) 

Article 28 is replaced by the following: 

'Article 28 
Designation and classification of goods and services 

1.  Goods  and  services  in  respect  of  which  registration  is  applied  for  shall  be 
classified  in  conformity  with  the  system  of  classification  established  by  the  Nice 
Agreement Concerning the International Classification of Goods and Services for the 
Purposes of the Registration of Marks of 15 June 1957 (hereinafter referred to as the 
'Nice Classification'). 

2. The goods and services for which the protection of the trade mark is sought shall 
be  identified  by  the  applicant  with  sufficient  clarity  and  precision  to  enable  the 
competent  authorities  and  economic  operators,  on  that  sole  basis,  to  determine  the 
extent of the protection sought. The list of goods and services shall allow each item 
to be classified in only one class of the Nice Classification.  

3.  For  the  purposes  of  paragraph  2,  the  general  indications  included  in  the  class 
headings of the Nice Classification or other general terms may be used, provided that 
they comply with the requisite standards of clarity and precision.  

4. The Agency shall reject the application in respect of indications or terms which are 
unclear or imprecise, if the applicant does not suggest an acceptable wording within 
a period set by the Agency to that effect.  

EN 

16 

   EN 

5. The use of general terms, including the general indications of the class headings of 
the  Nice  Classification,  shall  be  interpreted  as  including  all  the  goods  or  services 
clearly  covered  by  the  literal  meaning  of  the  indication  or  term.  The  use  of  such 
terms  or  indications  shall  not  be  interpreted  as  comprising  a  claim  to  goods  or 
services which cannot be so understood.  

6. Where the applicant requests registration for more than one class, the goods and 
services  shall  be  grouped  according  to  the  classes  of  the  Nice  Classification,  each 
group  being  preceded  by  the  number  of  the  class  to  which  that  group  of  goods  or 
services belongs and presented in the order of the classes.  

7.  The  classification  of  goods  and  services  shall  serve  exclusively  administrative 
purposes. Goods and services shall not be regarded as being similar to each other on 
the  ground  that  they  appear  in  the  same  class  under  the  Nice  Classification,  and 
goods and services shall not be regarded as being dissimilar from each other on the 
ground that they appear in different classes under the Nice Classification. 

8.  Proprietors  of  European  trade  marks  applied  for  before  22  June  2012  which  are 
registered  solely  in  respect  of  the  entire  heading  of  a  Nice  class,  may  declare  that 
their intention on the date of filing had been to seek protection in respect of goods or 
services  beyond  those  covered  by  the  literal  meaning  of  the  heading  of  that  class, 
provided that the goods or services so designated are included in the alphabetical list 
for that class of the edition of the Nice classification in force at the date of filing. 

The  declaration  shall  be  filed  at  the  Agency  within  4  months  from  the  entry  into 
force of this Regulation, and shall indicate, in a clear, precise and specific manner, 
the goods and services, other than those clearly covered by the literal meaning of the 
indications of the class heading, originally covered by the proprietor's intention. The 
Agency  shall  take  appropriate  measures  to  amend  the  Register  accordingly.  This 
possibility is without prejudice to the application of Articles 15, 42(2), 51(1)(a) and 
57(2). 

European trade marks for which no declaration is filed within the period referred to 
in  the  second  subparagraph  shall  be  deemed  to  extend,  as  from  the  expiry  of  that 
period,  only  to  goods  or  services  clearly  covered  by  the  literal  meaning  of  the 
indications included in the heading of the relevant class.'; 

(29) 

In Article 29(5), the following sentence is added: 

'If necessary, the Executive Director of the Agency shall request the Commission to 
consider enquiring whether a State within the meaning of the first sentence accords 
that reciprocal treatment.'; 

(30) 

Article 30 is replaced by the following: 

'Article 30 
Claiming priority 

1.  Priority  claims  shall  be  filed  together  with  the  European  trade  mark  application 
and shall include the date, number and country of the previous application.  

EN 

17 

   EN 

2. The Executive Director of the Agency may determine that additional information 
and  documentation  to  be  provided  by  the  applicant  in  support  of  the  priority  claim 
may  consist  of  less  than  is  required  under  the  rules  adopted  in  accordance  with 
Article  35a(d),  provided  that  the  information  required  is  available  to  the  Agency 
from other sources.';  

(31) 

Article 33 is amended as follows: 

(a) 

in paragraph 1, the following sentence is added: 

'The  priority  claim  shall  be  filed  together  with  the  European  trade  mark 
application.'; 

(b)  paragraph 2 is replaced by the following: 

'2. An applicant who wishes to claim priority pursuant to paragraph 1 shall file 
evidence of the display of goods or services under the mark applied for.'; 

(32) 

In Article 34, paragraph 3 is replaced by the following: 

'3.  The  seniority  claimed  for  the  European  trade  mark  shall  lapse  where  the  earlier 
trade  mark  the  seniority  of  which  is  claimed  is  declared  to  be  invalid  or  revoked. 
Where  the  earlier  trade  mark  is  revoked,  the  seniority  shall  lapse  provided  that  the 
revocation takes effect prior to the filing date or priority date of the European trade 
mark.'; 

(33) 

In Title III, the following Section 5 is inserted: 

'SECTION 5 
Delegation of powers 

Article 35a 
Delegation of powers 

The  Commission  shall  be  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 163 specifying: 

(a) 

(b) 

the  means  and  modalities  of  filing  an  application  for  a  European  trade  mark 
with the Agency in accordance with Article 25; 

the details regarding the content of the application for a European trade mark 
referred to in Article 26(1), the type of fees payable for the application referred 
to  in  Article  26(2),  including  the  number  of  classes  of  goods  and  services 
covered by those fees, and the formal conditions of the application referred to 
in Article 26(3); 

(c) 

the procedures for ascertaining reciprocity in accordance with Article 29(5); 

(d) 

the procedure and the rules on information and documentation for claiming the 
priority of a previous application in accordance with Article 30;  

EN 

18 

   EN 

(e) 

(f) 

the procedure and the rules on evidence for claiming an exhibition priority in 
accordance with Article 33(1); 

the procedure for claiming the seniority of a national trade mark in accordance 
with Article 34(1) and Article 35(1).'; 

(34) 

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

'(b) the European trade mark application complies with the conditions laid down in 
this Regulation and with the formal conditions referred to in Article 26(3).'; 

(35) 

In Article 37, paragraph 2 is deleted; 

(36) 

In Title IV, Section 2 is deleted; 

(37) 

Article 39 is amended as follows: 

(a)  paragraph 1 is replaced by the following: 

'1.  If  the  conditions  which  the  application  for  a  European  trade  mark  must 
satisfy have been fulfilled, the application shall be published for the purposes 
of Article 42 to the extent that it has not been refused pursuant to Article 37. 
The  publication  of  the  application  shall  be  without  prejudice  to  information 
already  made  available  to  the  public  otherwise  in  accordance  with  this 
Regulation or with delegated acts adopted pursuant to this Regulation.'; 

(b) 

the following paragraph 3 is added: 

'3.  The  Agency  shall  correct  any  mistakes  or  errors  in  the  publication  of  the 
application.';  

(38) 

Article 40 is replaced by the following: 

'Article 40 
Observations by third parties 

1.  Any  natural  or  legal  person  and  any  group  or  body  representing  manufacturers, 
producers,  suppliers  of  services,  traders  or  consumers  may  submit  to  the  Agency 
written observations, explaining on which grounds under Articles 5 and 7, the trade 
mark shall not be registered ex officio.  

They shall not be parties to the proceedings before the Agency.  

2. Third party observations shall be submitted before the end of the opposition period 
or,  where  an  opposition  against  the  trade  mark  has  been  filed,  before  the  final 
decision on the opposition is taken. 

3. The submission referred to in paragraph 1 shall be without prejudice to the right of 
the Agency to re-open the examination of absolute grounds of its own initiative any 
time before registration, where appropriate. 

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

(39) 

In Article 41, paragraph 3 is replaced by the following:  

'3. Opposition shall be expressed in writing, and shall specify the grounds on which it 
is made. It shall not be treated as duly entered until the opposition fee has been paid. 

4. Within a period fixed by the Agency, the opponent may submit facts, evidence and 
arguments in support of his case.';  

(40) 

In Article 42(2), first sentence, the phrase 'during the period of five years preceding 
the date of publication' is replaced by 'during the period of five years preceding the 
date of filing or the date of priority'; 

(41) 

Article 44 is amended as follows: 

(a) 

in paragraph 2, point (b) is replaced by the following: 

'(b) before the date of filing referred to in Article 27 has been accorded by the 
Agency and during the opposition period provided for in Article 41(1).'; 

(b)  paragraph 3 is deleted; 

(42) 

Article 45 is replaced by the following: 

'Article 45 
Registration 

1.  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  final  decision,  the  trade  mark  shall  be 
registered as a European trade mark. The registration shall be published. 

2. The Agency shall issue a certificate of registration. The certificate may be issued 
by electronic means. 

3. The proprietor of a registered European trade mark shall have the right to use in 
connection  with  the  goods  and  services  covered  by  the  registration  a  symbol  right 
next to the trade mark attesting that the trade mark is registered in the Union only as 
long as the registration remains in force. The exact configuration of that symbol shall 
be decided by the Executive Director of the Agency. 

4. The registered trade mark symbol shall not be used by any person other than the 
proprietor of the mark, or without the proprietor's consent. The proprietor of the trade 
mark shall not use the trade mark symbol before the mark is registered or after the 
revocation, declaration of invalidity, expiry or surrender of the trade mark.'; 

(43) 

In Title IV, the following Section 7 is inserted: 

'SECTION 7 
Delegation of powers 

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Article 45a 
Delegation of powers 

The  Commission  shall  be  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 163 specifying: 

(a) 

(b) 

(c) 

(d) 

(e) 

(f) 

(g) 

(h) 

the  procedure  for  the  examination  of  compliance  with  the  requirements  for  a 
filing  date  referred  to  in  Article  36(1)(a)  and  with  the  formal  conditions 
referred to in Article 26(3) and the procedure for verifying payment of the class 
fees referred to in Article 36(1)(c); 

the  procedure  for  the  examination  of  the  absolute  grounds  for  refusal  as 
referred to in Article 37; 

the details which the publication of the application referred to in Article 39(1) 
shall contain; 

the  procedure  for  correcting  mistakes  and  errors  in  publications  of  European 
trade mark applications referred to in Article 39(3);  

the procedure for the submission of observations by third parties referred to in 
Article 40; 

the details on the procedure for filing and examining an opposition set out in 
Articles 41 and 42; 

the procedures governing the amendment of the application pursuant to Article 
43(2) and the division of the application pursuant to Article 44; 

the particulars to be recorded in the Register when registering a European trade 
mark  and  the  modalities  of  the  publication  of  the  registration  referred  to  in 
Article  45(1),  the  content  and  the  modalities  of  issue  of  the  certificate  of 
registration referred to in Article 45(2).'; 

(44) 

In Article 49, paragraph 3 is deleted; 

(45) 

The following Article 49a is inserted: 

'Article 49a 
Delegation of powers 

The  Commission  shall  be  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 163 specifying: 

(a) 

(b) 

(c) 

the procedural modalities for the renewal of the European trade mark pursuant 
to Article 47, including the type of fees to be paid; 

the  procedure  governing  the  alteration  of the  registration  of  a  European  trade 
mark provided for in Article 48(2); 

the procedure governing the division of a European trade mark provided for in 
Article 49.'; 

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(46) 

In Article 50, paragraphs 2 and 3 are replaced by the following: 

'2. The surrender shall be declared to the Agency in writing by the proprietor of the 
trade  mark.  It  shall  not  have  effect  until  it  has  been  entered  in  the  Register.  The 
validity of the surrender of a European trade mark which is declared to the Agency 
subsequent  to  the  submission  of  an  application  for  revocation  of  that  trade  mark 
pursuant to Article 56(1) shall be conditional upon the final rejection or withdrawal 
of the application for revocation.';  

'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 a period 
established in accordance with Article 57a(a).';  

(47) 

In Article 53(1), the following subparagraph is added: 

'The conditions referred to in points (a), (b) and (c) of the first subparagraph shall be 
fulfilled at the filing date or the priority date of the European trade mark.'; 

(48) 

In Article 54(1) and (2), the words 'either' and 'or to oppose the use of the later trade 
mark' are deleted; 

(49) 

Article 56 is amended as follows: 

(a) 

in  paragraph  1,  point  (c),  'under  the  law  of  the  Member  State  concerned'  is 
replaced by 'under Union law or the law of the Member State concerned'; 

(b)  paragraph 3 is replaced by the following: 

'3.  An  application  for  revocation  or  for  a  declaration  of  invalidity  shall  be 
inadmissible where an application relating to the same subject matter and cause 
of  action,  and  involving  the  same  parties,  has  been  adjudicated  on  its  merits, 
either  by  the  Agency  or  by  a  European  trade  mark  court  as  referred  to  in 
Article 95 and the decision of the Agency or that court on that application has 
acquired the authority of a final decision.'; 

(50) 

In Article 57(2), second sentence, 'was published' is replaced by 'was filed or at the 
priority date of the European trade mark application'; 

(51) 

In Title VI, the following Section 6 is inserted: 

'SECTION 6 
Delegation of powers  

Article 57a 
Delegation of powers 

The  Commission  shall  be  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 163 specifying: 

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(a) 

(b) 

the  procedure  governing  the  surrender  of  a  European  trade  mark  set  out  in 
Article 50, including the period referred to in paragraph 3 of that Article;  

the  procedures  governing  the  revocation  and  invalidity  of  a  European  trade 
mark referred to in Articles 56 and 57.'; 

(52) 

Article 58(1) is replaced by the following: 

'1. An appeal shall lie from decisions of any of the decision-making instances of the 
Agency listed in Article 130 points (a) to (d). Both the appeal period provided for in 
Article 60 and the filing of the appeal shall have suspensive effect.';  

(53) 

Article 62 is deleted; 

(54) 

Article 64(3) is replaced by the following: 

'3. The decisions of the Boards of Appeal shall take effect only as from the date of 
expiry  of  the  period  referred  to  in  Article  65(5)  or,  if  an  action  has  been  brought 
before  the  General  Court  within  that  period,  as  from  the  date  of  dismissal  of  such 
action  or  of  any  appeal  filed  with  the  Court  of  Justice  against  the  decision  of  the 
General Court.'; 

(55) 

Article 65 is amended as follows: 

(a)  paragraph 1 is replaced by the following: 

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

(b)  paragraph 3 is replaced by the following: 

'3. The General Court shall have jurisdiction to annul or to alter the contested 
decision.'; 

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

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

6. The Agency shall take the necessary measures to comply with the judgment 
of the General Court or, in case of appeal against that judgment, the Court of 
Justice.'; 

(56) 

The following Article 65a is inserted: 

'Article 65a 
Delegation of powers 

The  Commission  shall  be  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 163 specifying: 

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(a) 

(b) 

the content of the notice of appeal referred to in Article 60 and the procedure 
for the filing and the examination of an appeal; 

the content and form of the Board of Appeal's decisions referred to in Article 
64;  

(c) 

the reimbursement of the appeal fees referred to in Article 60.''; 

(57) 

The title of Title VIII is replaced by the following: 

'SPECIFIC  PROVISIONS  ON  EUROPEAN  COLLECTIVE  MARKS  AND 
CERTIFICATION MARKS'; 

(58) 

Between the title of Title VIII and Article 66, the following heading is inserted: 

'SECTION 1 
European collective marks'; 

(59) 

In Article 66, paragraph 3 is replaced by the following: 

'3.  Titles  I  to  VII  and  IX  to  XIV  shall  apply  to  European  collective  marks  to  the 
extent that this section does not provide otherwise.'; 

(60) 

In Article 67(1), the words 'within the period prescribed' are replaced by 'within the 
period prescribed in accordance with Article 74a';  

(61) 

Article 69 is replaced by the following:  

'Article 69 
Observations by third parties 

Where  written  observations  on  a  European  collective  mark  are  submitted  to  the 
Agency  pursuant  to  Article  40,  those  observations  may  also  be  based  on  the 
particular grounds on which the application for a European collective mark shall be 
refused pursuant to Article 68.'; 

(62) 

The following Article 74a is inserted: 

'Article 74a 
Delegation of powers 

The  Commission  shall  be  empowered  to  adopt  delegated  acts  in  accordance  with 
Article  163  specifying  the  period  referred  to  in  Article  67(1)  for  submitting  the 
regulations  governing  use  of  the  European  collective  mark  to  the  Agency  and  the 
content of those regulations as set out in Article 67(2).'; 

(63) 

In Title VIII, the following Section 2 is added: 

'SECTION 2 
European Certification Marks 

EN 

24 

   EN 

Article 74b 
European certification marks 

1. A European certification mark shall be a European trade mark which is described 
as  such  when  the  mark  is  applied  for  and  is  capable  of  distinguishing  goods  or 
services which are certified by the proprietor of the mark in respect of geographical 
origin, material, mode of manufacture of goods or performance of services, quality, 
accuracy or other characteristic from goods and services which are not so certified.  

2. Any legal person, including institutions, authorities and bodies governed by public 
law, may apply for European certification marks provided that: 

(a) 

(b) 

the legal person does not carry on a business involving the supply of goods or 
services of the kind certified; 

the  legal  person  is  competent  to  certify  the  goods  or  services  for  which  the 
mark is to be registered.  

3. By way of 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 
European  certification  marks  within  the  meaning  of  paragraph  1.  A  certification 
mark shall not entitle the proprietor to prohibit a third party from using in the course 
of trade such signs or indications, provided the third party uses them in accordance 
with honest practices in industrial or commercial matters. A certification mark may 
not be invoked against a third party who is entitled to use a geographical name. 

4.  Titles  I  to  VII  and  IX  to  XIV  shall  apply  to  European  certification  marks  to  the 
extent that this Section does not provide otherwise. 

Article 74c 
Regulations governing use of the mark 

1. An applicant for a European certification mark shall submit regulations governing 
the  use  of  the  certification  mark  within  the  period  prescribed  in  accordance  with 
Article 74k. 

2. The regulations governing use shall specify the persons authorised to use the mark, 
the characteristics to be certified by the mark, how the certifying body is to test those 
characteristics and to supervise the use of the mark as well as the conditions of use of 
the mark, including sanctions. 

Article 74d 
Refusal of the application 

1.  In  addition  to  the  grounds  for  refusal  of  a  European  trade  mark  application 
provided for in Articles 36 and 37, an application for a European certification mark 
shall  be  refused  where  Articles  74b  and  74c  are  not  satisfied,  or  where  the 
regulations governing use are contrary to public policy or to accepted principles of 
morality. 

EN 

25 

   EN 

2. An application for a European certification 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 certification mark. 

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

Article 74e 
Observations by third parties 

Where  written  observations  on  a  European  certification  mark  are  submitted  to  the 
Agency  pursuant  to  Article  40,  those  observations  may  also  be  based  on  the 
particular  grounds  on  which  the  application  for  a  European  certification  mark  shall 
be refused pursuant to Article 74d. 

Article 74f 
Amendment of the regulations governing use of the mark 

1.  The  proprietor  of  a  European  certification  mark  shall  submit  to  the  Agency  any 
amended regulations governing use. 

2.  The  amendment  shall  not  be  mentioned  in  the  Register  where  the  amended 
regulations  do  not  satisfy  the  requirements  of  Article  74c  or  involve  one  of  the 
grounds for refusal referred to in Article 74d. 

3. Article 74e shall apply to amended regulations governing use. 

4. For the purposes of 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 74g 
Transfer 

By way of derogation from Article 17(1), a European certification mark may only be 
transferred to a legal person which meets the requirements of Article 74b(2).  

Article 74h 
Persons who are entitled to bring an action for infringement 

1.  Only  the  proprietor  of  a  European  certification  mark  or  any  person  specifically 
authorised by him to that effect shall be entitled to bring an action for infringement. 

2.  The  proprietor  of  a  European  certification  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 74i 
Grounds for revocation 

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   EN 

In addition to the grounds for revocation provided for in Article 51, the rights of the 
proprietor  of  a  European  certification  mark  shall  be  revoked  on  application  to  the 
Agency or on the basis of a counterclaim in infringement proceedings, where any of 
the following conditions is fulfilled: 

(a) 

the proprietor no longer meets the requirements of Article 74b(2); 

(b) 

(c) 

(d) 

the proprietor does not take reasonable steps to prevent the mark being used in 
a manner incompatible with the conditions of use 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 74d(2);  

an  amendment  to  the  regulations  governing  use  of  the  mark  has  been 
mentioned in the Register in breach of Article 74f(2), unless the proprietor of 
the mark, by further amending the regulations governing use, complies with the 
requirements of that Article. 

Article 74j 
Grounds for invalidity 

In  addition  to  the  grounds  for  invalidity  provided  for  in  Articles  52  and  53,  a 
European  certification  mark  which  is  registered  in  breach  of  Article  74d  shall  be 
declared  invalid  on  application  to  the  Agency  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 Article 74d. 

Article 74k 
Delegation of powers 

The  Commission  shall  be  empowered  to  adopt  delegated  acts  in  accordance  with 
Article  163  specifying  the  period  referred  to  in  Article  74c(1)  for  submitting  the 
regulations governing use of the European certification mark to the Agency and the 
content of those regulations as set out in Article 74c(2).'; 

(64) 

Article 75 is replaced by the following: 

'Article 75 
Form of decisions and communications of the Agency 

1.  Decisions  of  the  Agency  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 
an opportunity to present their comments. 

2.  Any  decision,  communication  or  notice  from  the  Agency  shall  indicate  the 
department or division of the Agency as well as the name or the names of the official 
or officials responsible. They shall be signed by the official or officials, or, instead of 
a signature, carry a printed or stamped seal of the Agency. The Executive Director 
may  determine  that  other  means  of  identifying  the  department  or  division  of  the 

EN 

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Agency and the name of the official or officials responsible or an identification other 
than  a  seal  may  be  used  where  decisions,  communications  or  notices  from  the 
Agency  are 
technical  means  of 
communication.'; 

telecopier  or  any  other 

transmitted  by 

(65) 

In Article 76(1), the following sentence is added: 

'In  invalidity  proceedings  pursuant  to  Article  52,  the  Agency  shall  limit  its 
examination to the grounds and arguments provided by the parties.'; 

(66) 

In Article 78, the following paragraph 5 is added: 

'5. The Executive Director of the Agency shall determine the amounts of expenses, to 
be paid, including advances, as regards the costs of taking of evidence referred to in 
Article 93a(b).'; 

(67) 

Article 79 is replaced by the following: 

'Article 79 
Notification 

1. The Agency 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 delegated acts adopted pursuant to this Regulation, or of which 
notification has been ordered by the Executive Director of the Agency.  

2.  The  Executive  Director  may  determine  which  documents  other  than  decisions 
subject to a time limit for appeal and summonses shall be notified by registered letter 
with advice of delivery.  

3.  Notification  may  be  effected  by  electronic  means,  the  details  of  which  shall  be 
determined by the Executive Director. 

4. Where notification shall be effected by public notice, the Executive Director shall 
determine how the public notice is to be given and shall fix the beginning of the one 
month  period  on  the  expiry  of  which  the  document  shall  be  deemed  to  have  been 
notified.'; 

(68) 

The following Articles 79a, 79b, 79c and 79d are inserted: 

'Article 79a 
Noting of loss of rights 

Where  the  Agency  finds  that  the  loss  of  any  rights  results  from  this  Regulation  or 
delegated acts adopted pursuant to this Regulation without any decision having been 
taken, it shall communicate this to the person concerned in accordance with Article 
79. The latter may apply for a decision on the matter. The Agency shall adopt such a 
decision where it disagrees with the person requesting it; otherwise the Agency shall 
amend its finding and inform the person requesting the decision. 

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Article 79b 
Communications to the Agency 

Communications addressed to the Agency may be effected by electronic means. The 
Executive  Director  shall  determine  the  extent  and  the  technical  conditions  under 
which those communications may be submitted electronically.  

Article 79c 
Time limits 

1. The calculation and duration of time limits shall be subject to the rules adopted in 
accordance with Article 93a(f).  

2. The Executive Director of the Agency shall determine before the commencement 
of  each  calendar  year  the  days  on  which  the  Agency  is  not  open  for  receipt  of 
documents  or  on  which  ordinary  mail  is  not  delivered  in  the  locality  in  which  the 
Agency is located. 

3. The Executive Director shall determine the duration of the period of interruption 
in case of a general interruption in the delivery of mail in the Member State where 
the Agency is located or in case of an actual interruption of the Agency’s connection 
to admitted electronic means of communication.  

4.  If  an  exceptional  occurrence  such  as  a  natural  disaster  or  strike  interrupts  or 
dislocates proper communication from the parties to the proceedings to the Agency 
or  vice-versa,  the  Executive  Director  may  determine  that  for  parties  of  the 
proceedings having their residence or registered office in the State concerned or who 
have appointed a representative with a place of business in the State concerned, all 
time  limits  that  otherwise  would  expire  on  or  after  the  date  of  commencement  of 
such occurrence, as determined by him, shall extend until a date to be determined by 
him.  When  determining  that  date,  he  shall  assess  when  the  exceptional  occurrence 
comes to an end. If the occurrence affects the seat of the Agency, such determination 
of the Executive Director shall specify that it applies in respect of all parties to the 
proceedings. 

Article 79d 
Correction of errors and manifest oversights 

The Agency shall correct any linguistic errors or errors of transcription and manifest 
oversights in the Agency's decisions or technical errors attributable to the Agency in 
registering the trade mark or in publishing its registration.'; 

(69) 

Article 80 is amended as follows: 

(a) 

in paragraph 1, first sentence, the phrase 'decision which contains an obvious 
procedural error' is replaced by 'decision which contains an obvious error'; 

(b) 

in paragraph 2, the second sentence is replaced by the following:  

'The cancellation of the entry in the Register or the revocation of the decision 
shall be effected within one year from the date on which the entry was made in 

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the Register or that decision was taken, after consultation with the parties to the 
proceedings and any proprietor of rights to the European trade mark in question 
that are entered in the Register.'; 

(c)  paragraph 3 is replaced by the following: 

'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 of correcting errors and 
manifest oversights under Article 79d. Where an appeal has been filed against 
an Agency's decision containing an error, the appeal proceedings shall become 
devoid  of  purpose  upon  revocation  by  the  Agency  of  its  decision  pursuant  to 
paragraph 1 of this Article.'; 

(70) 

Article 82 is amended as follows: 

(a)  paragraph 2 is replaced by the following: 

'2.  This  Article  shall  not  apply  to  the  time  limits  laid  down  in  Article  29(1), 
Article  33(1),  Article  36(2),  Article  41(1)  and  (3),  Article  47(3),  Article  60, 
Article  65(5),  Article  81,  Article  112,  or  to  the  time  limits  laid  down  in 
paragraph 1 of this Article or the time limit for claiming seniority pursuant to 
Article 34 after the application has been filed.'; 

(b)  paragraph 4 is replaced by the following: 

'4. If the Agency accepts the application, the consequences of having failed to 
observe the time limit shall be deemed not to have occurred. If a decision has 
been taken between the expiry of the unobserved time limit and the request for 
continuation  of  proceedings,  the  department  competent  to  decide  on  the 
omitted act shall review the decision and, where completion of the omitted act 
itself is sufficient, take a different decision. If the original decision is not to be 
altered, it shall be confirmed in writing.'; 

(71) 

The following Article 82a is inserted: 

'Article 82a 
Interruption of proceedings 

When  interrupting  or  resuming  proceedings,  the  Agency  shall  comply  with  the 
modalities set out in accordance with Article 93a(i).';  

(72) 

Article 83 is replaced by the following: 

'Article 83 
Reference to general principles 

In  the  absence  of  procedural  provisions  in  this  Regulation  or  in  delegated  acts 
adopted pursuant to this Regulation, the Agency shall take into account the principles 
of procedural law generally recognised in the Member States.'; 

EN 

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(73) 

In  Article  85(1),  the  words  'under  the  conditions  laid  down  in  the  Implementing 
Regulation'  are  replaced  by  'under  the  conditions  laid  down  in  accordance  with 
Article 93a(j).';  

(74) 

In Article 86(2), the second sentence is replaced by the following: 

'Each  Member  State  shall  designate  a  single  authority  responsible  for  verifying  the 
authenticity of the decision and shall communicate its contact details to the Agency, 
the  Court  of  Justice  and  the  Commission.  The  order  for  the  enforcement  of  the 
decision shall be appended to the decision by that authority, without other formality 
than verification of the authenticity of the decision.'; 

(75) 

Article 87 is replaced by the following: 

'Article 87 
Register of European trade marks 

1.  The  Agency  shall  keep  a  Register,  which  shall  contain  those  particulars  the 
registration or inclusion of which is provided for by this Regulation or by a delegated 
act  adopted  pursuant  to  this  Regulation.  The  Agency  shall  keep  the  Register  up  to 
date. 

2. The Register shall be open to public inspection. It may be kept electronically. 

3.  The  Agency  shall  maintain  an  electronic  database  containing  the  particulars  of 
applications  for  registration  of  European  trade  marks  and  the  entries  made  in  the 
Register.  The  contents  of  that  database  may  be  made  available  to  the  public.  The 
Executive Director shall determine the conditions of access to the database and the 
manner  in  which  the  contents  of  this  database  may  be  made  available  in  machine-
readable form, including the corresponding charges.'; 

(76) 

Article 88 is amended as follows: 

(a) 

the title 'Inspection of files' is replaced by 'Inspection and keeping of files'; 

(b)  paragraph 4 is replaced by the following: 

'4.  Where  the  files  are  inspected  pursuant  to  paragraphs  2  or  3,  certain 
documents in the file may be withheld from inspection. The Executive Director 
shall determine the means of inspection.  

5.  The  Agency  shall  keep  the  files  of  any  procedure  relating  to  a  European 
trade  mark  application  or  European  trade  mark  registration.  The  Executive 
Director shall determine the form in which those files shall be kept. Where the 
files are kept in electronic format, the original documents forming the basis of 
such  electronic  files  shall  be  disposed  of  after  a  period  following  their 
reception  by  the  Agency,  which  shall  be  determined  by  the  Executive 
Director.'; 

(77) 

Article 89 is replaced by the following:  

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'Article 89 
Periodical publications 

1. The Agency shall periodically publish: 

(a) 

(b) 

a  European  Trade  Marks  Bulletin  containing  entries  made  in  the  Register  as 
well  as  other  particulars  the  publication  of  which  is  prescribed  by  this 
Regulation or by delegated acts adopted in accordance with this Regulation; 

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

The  publications  referred  to  in  points  (a)  and  (b)  may  be  effected  by  electronic 
means. 

2.  The  European  Trade  Marks  Bulletin  shall  be  published  in  the  manner  and 
frequency determined by the Executive Director.  

3. The Executive Director may determine that certain items shall be published in the 
Official Journal in all the official languages of the Union.'; 

(78) 

Article 92 is amended as follows: 

(a)  paragraph 2 is replaced by the following: 

'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  Union  shall  be 
represented  before  the  Agency  in  accordance  with  Article  93(1)  in  all 
proceedings provided for by this Regulation, other than in filing an application 
for a European trade mark. 

By way of derogation from the first subparagraph, the natural or legal persons 
referred to in that subparagraph need not be represented before the Agency in 
the cases provided for in accordance with Article 93a(p).'; 

(b)  paragraph 4 is replaced by the following: 

'4.  Where  the  conditions  established  in  accordance  with  Article  93a(p)  are 
fulfilled, a common representative shall be appointed.';  

(79) 

Article 93 is amended as follows: 

(a)  paragraph 1 is replaced by the following: 

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

(a) 

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

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(b)  professional  representatives  whose  names  appear  on  the  list  maintained 

for this purpose by the Agency. 

Representatives acting before the Agency shall, on request by the Agency, file 
with it a signed authorisation for insertion on the files.'; 

(b)  paragraph 4 is replaced by the following: 

'4. The Executive Director of the Agency may grant exemption from: 

(a) 

(b) 

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

the  requirement  of  paragraph  2(a) 
in  case  of  highly  qualified 
professionals, provided that the requirements of paragraphs 2(b) and (c) 
are fulfilled.'; 

(c)  paragraph 5 is replaced by the following: 

'5. A person may be removed from the list of professional representatives under 
the conditions established in accordance with Article 93a(p).';  

(80) 

In Title IX, the following Section 5 is inserted: 

'SECTION 5 
Conferral of powers 

Article 93a 
Delegation of powers 

The  Commission  shall  be  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 163 specifying: 

(a) 

the requirements concerning the form of the decisions referred to in Article 75; 

(b) 

the modalities of oral proceedings and of the taking of evidence referred to in 
Articles 77 and 78; 

(c) 

the modalities of the notification referred to in Article 79;  

(d) 

the procedure for the noting of loss of rights referred to in Article 79a;  

(e) 

the  rules  on  the  means  of  communication,  including  the  electronic  means  of 
communication  referred  to  in  Article  79b,  to  be  used  by  the  parties  to 
proceedings  before  the  Agency  and  the  forms  to  be  made  available  by  the 
Agency; 

(f) 

the rules governing the calculation and duration of the time limits referred to in 
Article 79c(1); 

EN 

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(g) 

the  procedure  for  the  correction  of  linguistic  errors  or  errors  of  transcription 
and  manifest  oversights  in  the  Agency's  decisions  and  technical  errors 
attributable  to  the  Agency  in  registering  the  trade  mark  or  in  publishing  its 
registration as referred to in Article 79d; 

(h) 

the procedure for the revocation of a decision or for the cancellation of an entry 
in the Register as referred to in Article 80(1); 

(i) 

(j) 

the  modalities  of  the  interruption  and  resumption  of  proceedings  before  the 
Agency as referred to in Article 82a; 

the procedures concerning the apportionment and fixing of costs, as referred to 
in Article 85(1);  

(k) 

the particulars referred to in Article 87(1);  

(l) 

(m) 

(n) 

(o) 

the  procedure  for  the  inspection  of  files  provided  for  in  Article  88,  including 
the parts of the file excluded from inspection, and the modalities of the keeping 
of files of the Agency provided for in Article 88(5); 

the modalities of publication of the particulars and entries referred to in Article 
89(1)(a)  in  the  European  Trade  Marks  Bulletin,  including  the  type  of 
information, and the languages in which those particulars and entries are to be 
published; 

the frequency, form and languages in which publications of the Official Journal 
of the Agency referred to in Article 89(1)(b) shall be made; 

the modalities of the exchange of information and communications between the 
Agency and the authorities of the Member States and of the inspection of files 
by or via courts or authorities of the Member States pursuant to Article 90; 

(p)  derogations from the obligation to be represented before the Agency pursuant 
to Article 92(2), the conditions under which a common representative shall be 
appointed  pursuant  to  Article  92(4),  the  conditions  under  which  employees 
referred  to  in  Article  92(3)  and  professional  representatives  referred  to  in 
Article  93(1)  must  file  with  the  Agency  a  signed  authorisation  in  order  to  be 
able  to  undertake  representation,  the  content  of  that  authorisation,  and  the 
conditions under which a person may be removed from the list of professional 
representatives referred to in Article 93(5).'; 

(81) 

In Title X, the title of Section 1 is replaced by the following: 

'Application  of  the  Union  rules  on  jurisdiction  and  the  recognition  and 
enforcement of judgments in civil and commercial matters'; 

(82) 

Article 94 is amended as follows: 

(a) 

the title is replaced by the following: 

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'Application  of  the  Union  rules  on  jurisdiction  and  the  recognition  and 
enforcement of judgments in civil and commercial matters'; 

(b) 

in paragraph 1, 'Regulation (EC) No 44/2001' is replaced by 'the Union rules on 
jurisdiction  and  the  recognition  and  enforcement  of  judgments  in  civil  and 
commercial matters'; 

(c) 

the following paragraph 3 is added: 

'3. References in this Regulation to Regulation (EC) No 44/2001 shall include, 
where appropriate,  the  Agreement  between the European Community and the 
Kingdom of Denmark on jurisdiction and the recognition  and  enforcement of 
judgments in civil and commercial matters done on 19 October 2005.'; 

(83) 

In Article 96(c), 'Article 9(3), second sentence' is replaced by 'Article 9b(2)'; 

(84) 

In Article 99, paragraph 3 is replaced by the following: 

'3. In the actions referred to in Article 96(a) and (c), a plea relating to revocation or 
invalidity  of  the  European  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 European trade mark could be revoked for lack of genuine use at 
the time the infringement action was brought.'; 

(85) 

Article 100 is amended as follows: 

(a)  paragraph 4 is replaced by the following: 

'4. The European trade mark court with which a counterclaim for revocation or 
for a declaration of invalidity of the European trade mark has been filed shall 
not proceed with the examination of the counterclaim, until either the interested 
party  or  the  court  have  informed  the  Agency  of  the  date  on  which  the 
counterclaim  was  filed.  The  Agency  shall  record  that  information  in  the 
Register. If an application for revocation or for a declaration of invalidity of the 
European trade mark is pending before the Agency, the court shall be informed 
thereof  by  the  Agency  and  stay  the  proceedings  until  the  decision  on  the 
application is final or the application is withdrawn.'; 

(b)  paragraph 6 is replaced by the following: 

'6. Where a European trade mark court has given a judgment which has become 
final  on  a  counterclaim  for  revocation  or  for  invalidity  of  a  European  trade 
mark, a copy of the judgment shall be sent to the Agency without delay, either 
by the court or by any of the parties to the national proceedings. The Agency or 
any  other  interested  party  may  request  information  about  such  transmission. 
The  Agency  shall  mention  the  judgment  in  the  Register  and  shall  take  the 
necessary measures to comply with its operative part.'; 

(86) 

In Article 102, paragraph 2 is replaced by the following: 

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35 

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'2. The European trade mark court may also apply measures or orders available under 
the applicable law which it deems appropriate under the circumstances of the case.'; 

(87) 

Article 108 is deleted; 

(88) 

In  Article  113(3),  the  phrase  'together  with  the  formal  conditions  laid  down  in  the 
Implementing  Regulation'  is  replaced  by  'together  with  the  formal  conditions  laid 
down in accordance with Article 114a'; 

(89) 

In Article 114(2), the words 'the Implementing Regulation' are replaced by 'delegated 
acts adopted in accordance with this Regulation'; 

(90) 

The following Article 114a is inserted: 

'Article 114a 
Delegation of powers 

The  Commission  shall  be  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 163 specifying the formal conditions with which a request for conversion of a 
European  trade  mark  application  must  comply,  the  details  of  its  examination,  and 
those concerning its publication.';  

(91) 

In Article 116, paragraph 2 is replaced by the following: 

'2. Without prejudice to paragraph 1, the Agency may make use of seconded national 
experts  or  other  staff  not  employed  by  the  Agency.  The  Management  Board  shall 
adopt  a  decision  laying  down  rules  on  the  secondment  to  the  Agency  of  national 
experts.'; 

(92) 

In Article 117, the words 'to the Office' are replaced by 'to the Agency and its staff'; 

(93) 

Article 119 is amended as follows: 

(a) 

in  paragraph  6,  second  subparagraph,  the  second  sentence  is  replaced  by  the 
following: 

'The  translation  shall  be  produced  within  the  period  prescribed  in  accordance 
with Article 144a(b).'; 

(b) 

the following paragraph 8 is added: 

'8.  The  Executive  Director  shall  determine  the  manner  in  which  translations 
shall be certified.'; 

(94) 

In  Article  120(1),  the  words  'the  Implementing  Regulation'  are  replaced  by  'a 
delegated act adopted pursuant to this Regulation'; 

(95) 

Article 122 is deleted; 

(96) 

Article 123 is replaced by the following: 

EN 

36 

   EN 

'Article 123 
Transparency 

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

2.  The  Management  Board  shall  adopt  the  detailed  rules  for  applying  Regulation 
(EC) No 1049/2001. 

3. Decisions taken by the Agency under Article 8 of Regulation (EC) No 1049/2001 
may  form  the  subject  of  a  complaint  to the  Ombudsman  or  of  an  action  before  the 
Court of Justice of the European Union, under the conditions laid down in Articles 
228 and 263 of the Treaty respectively. 

4. The processing of personal data by the Agency shall be subject to Regulation (EC) 
No 45/2001 of the European Parliament and of the Council (**). 

(*) OJ L 145, 31.5.2001, p. 43. 

(**) OJ L 8, 12.1.2001, p. 1.'; 

(97) 

The following Article 123a is inserted: 

'Article 123a 
Security rules on the protection of classified and sensitive non-classified 
information 

The  Agency  shall  apply  the  security  principles  contained  in  the  Commission's 
security  rules  for  protecting  European  Union  Classified  Information  (EUCI)  and 
sensitive non-classified information, as set out in the annex to Commission Decision 
2001/844/EC, ECSC, Euratom (*). Applying the security principles shall cover, inter 
alia, provisions for the exchange, processing and storage of such information. 

(*) OJ L 317, 3.12.2001, p. 1.'; 

(98) 

In Title XII, the following Section 1a is inserted: 

'SECTION 1a 
Tasks of the Agency and cooperation to promote convergence  

Article 123b 
Tasks of the Agency 

1. The Agency shall have the following tasks: 

(a) 

(b) 

administration and promotion of the European trade mark system established in 
this Regulation; 

administration  and  promotion  of  the  European  design  system  established  in 
Council Regulation (EC) No 6/2002 (*); 

EN 

37 

   EN 

(c)  promoting convergence of practices and tools in the fields of trade marks and 
designs  in  cooperation  with  the  central  industrial  property  offices  in  the 
Member States, including the Benelux Intellectual Property Office; 

(d) 

the  tasks  referred  to  in  Regulation  (EU)  No  386/2012  of  the  European 
Parliament and of the Council (**).  

2.  The  Agency  shall  cooperate  with  institutions,  authorities,  bodies,  industrial 
property offices, international and non-governmental organisations in relation to the 
tasks laid down in paragraph 1. 

3. The Agency may provide voluntary mediation services for the purpose of assisting 
parties in reaching an amicable settlement.  

Article 123c 
Cooperation to promote convergence of practices and tools 

1.  The  Agency  and  the  industrial  property  offices  of  the  Member  States  and  the 
Benelux Office for Intellectual Property shall cooperate with each other to promote 
convergence of practices and tools in the field of trade marks and designs.  

This cooperation shall cover the following areas of activity: 

(a) 

the development of common examination standards; 

(b) 

(c) 

(d) 

(e) 

(f) 

the  creation  of  common  or  connected  databases  and  portals  for  Union-wide 
consultation, search and classification purposes; 

the continuous provision and exchange of data and information, including the 
feeding of the databases and portals referred to in point (b); 

the establishment of common standards and practices, with a view to ensuring 
interoperability  between  procedures  and  systems  throughout  the  Union  and 
enhancing their consistency, efficiency and effectiveness; 

the  sharing  of  information  on  industrial  property  rights  and  procedures, 
including mutual support to helpdesks and information centres; 

the exchange of technical expertise and assistance in relation to the areas laid 
down in points (a) to (e). 

2.  The  Agency  shall  define,  elaborate  and  coordinate  common  projects  of  Union 
interest  with  regard  to  the  areas  referred  to  in  paragraph  1.  The  project  definition 
shall  contain  the  specific  obligations  and  responsibilities  of  each  participating 
industrial  property  office  of  the  Member  States  and  the  Benelux  Office  for 
Intellectual Property. 

3. The industrial property offices of the Member States and the  Benelux Office for 
Intellectual Property shall participate effectively in the common projects referred to 
their  development,  functioning, 
to  ensuring 
in  paragraph  2  with  a  view 
interoperability, and keeping up to date. 

EN 

38 

   EN 

4.  The  Agency  shall  provide  financial  support  to  the  common  projects  of  Union 
interest  referred  to  in  paragraph  2  to  the  extent  this  is  necessary  to  ensure  the 
effective participation of the industrial property offices of the Member States and the 
Benelux  Office  for  Intellectual  Property  in  the  projects  within  the  meaning  of 
paragraph 3. That financial support may take the form of grants. The total amount of 
funding shall not exceed 10% of the yearly income of the Agency. The beneficiaries 
of  grants  shall  be  the  industrial  property  offices  of  the  Member  States  and  the 
Benelux  Office  for  Intellectual  Property.  Grants  may  be  awarded  without  calls  for 
proposals  in  accordance  with  the  financial  rules  applicable  to  the  Agency  and  with 
the  principles  of  grant  procedures  contained  in  the  Financial  Regulation  (EU)  No 
966/2012  of  the  European  Parliament  and  of  the  Council  (***)  and  in  the 
Commission delegated Regulation (EU) No 1268/2012 (****). 

(*) OJ L 3, 5.1.2002, p. 1. 

(**) OJ L 129, 16.5.2012, p. 1. 

(***) OJ L 298, 26.10.2012, p. 1. 

(****) OJ L 362, 31.12.2012, p. 1.'; 

(99) 

In Title XII, sections 2 and 3 are replaced by the following: 

'SECTION 2 
Management Board 

Article 124 
Functions of the Management Board 

1. Without prejudice to the functions attributed to the Budget Committee in Section 
5, the Management Board shall have the following functions: 

(a)  on the basis of a draft submitted by the Executive Director in accordance with 
Article  128(4)(c),  the  Management  Board  shall  adopt  the  annual  work 
programme of the Agency for the coming year, taking into account the opinion 
of the Commission , and shall forward the adopted annual work programme to 
the European Parliament, the Council and the Commission; 

(b)  on the basis of a draft submitted by the Executive Director in accordance with 
Article 128(4)(d) and taking into account the opinion of the Commission, the 
Management  Board  shall  adopt  a  multi-annual  strategic  programme  for  the 
Agency,  including  the  Agency's  strategy  for  international  cooperation, 
following  an  exchange  of  views  between  the  Executive  Director  and  the 
relevant committee in the European Parliament, and shall forward the adopted 
multi-annual strategic programme to the European Parliament, the Council and 
the Commission; 

(c)  on the basis of a draft submitted by the Executive Director in accordance with 
Article  128(4)(f),  the  Management  Board  shall  adopt  the  annual  report  and 
shall  forward  the  adopted  annual  report  to  the  European  Parliament,  the 
Council, the Commission and the Court of Auditors; 

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39 

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(d)  on the basis of a draft submitted by the Executive Director in accordance with 
Article  128(4)(g),  the  Management  Board  shall  adopt  the  multiannual  staff 
policy plan; 

(e) 

(f) 

(g) 

(h) 

(i) 

(j) 

(k) 

the Management Board shall adopt rules on the prevention and management of 
conflicts of interest in the Agency; 

in accordance with paragraph 2, it shall exercise, with respect to the staff of the 
Agency,  the  powers  conferred  by  the  Staff  Regulations  on  the  Appointing 
Authority  and  by  the  Conditions  of  Employment  of  Other  Servants  on  the 
Authority  Empowered  to  Conclude  Contract  of  Employment  ("the  appointing 
authority powers"); 

the Management Board shall adopt appropriate implementing rules to the Staff 
Regulations  and  the  Conditions  of  Employment  of  Other  Servants  in 
accordance with Article 110 of the Staff Regulations; 

the Management Board shall appoint and may remove the Executive Director 
and the Deputy Executive Director or Deputy Executive Directors from office 
pursuant  to  Article  129,  and  shall  appoint  the  President,  the  chairpersons  and 
the members of the Boards of Appeal pursuant to Article 136; 

the  Management  Board  shall  ensure  adequate  follow-up  to  the  findings  and 
recommendations  stemming  from  the  internal  or  external  audit  reports  and 
evaluations  referred  to  in  Article  165a,  as  well  as  from  investigations  of  the 
European Anti-fraud Office (OLAF); 

the Management Board shall be consulted before adoption of the guidelines for 
examination  in  the  Agency  and  in  the  other  cases  provided  for  in  this 
Regulation; 

the  Management  Board  may  deliver  opinions  and  requests  for  information  to 
the  Executive  Director  and  to  the  Commission  where  it  considers  that  this  is 
necessary. 

2.  The  Management  Board  shall  adopt,  in accordance  with  Article  110  of  the  Staff 
Regulations and 142 of the Conditions of Employment of Other Servants, a decision 
based on Article 2(1) of the Staff Regulations and on Article 6 of the Conditions of 
Employment of Other Servants, delegating the relevant appointing authority powers 
to the Executive Director and defining the conditions under which this delegation of 
powers can be suspended.  

The Executive Director shall be authorised to sub-delegate those powers.  

Where exceptional circumstances so require, the Management Board may by way of 
a decision temporarily suspend the delegation of the appointing authority powers to 
the Executive Director and those sub-delegated by the latter and exercise them itself 
or delegate them to one of its members or to a staff member other than the Executive 
Director. 

EN 

40 

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Article 125 
Composition of the Management Board 

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

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

3. The duration of the term of office shall be four years. The term of office shall be 
extendable. 

Article 126 
Chairperson of the Management Board 

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

2. The duration of the terms of office of the chairperson and the deputy chairperson 
shall  be  four  years.  The  terms  of  office  shall  be  renewable  once.  If,  however,  their 
membership of the Management Board ends at any time during their term of office, 
their term of office shall automatically expire on that date also. 

Article 127 
Meetings 

1. Meetings of the Management Board shall be convened by its chairperson. 

2. The Executive Director shall take part in the deliberations, unless the Management 
Board decides otherwise. 

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

4. The Management Board shall adopt rules of procedure. 

5.  The  Management  Board  shall  take  its  decisions  by  an  absolute  majority  of  its 
members. However, a majority of two-thirds of its members shall be required for the 
decisions  which  the  Management  Board  is  empowered  to  take  under  Article 
124(1)(a)  and  (b),  Article  126(1)  and  Article  129(2)  and  (4).  In  both  cases  each 
member shall have one vote. 

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

7. The Secretariat for the Management Board shall be provided by the Agency. 

SECTION 2a 
Executive Board 

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41 

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Article 127a 
Establishment 

The Management Board may establish an Executive Board. 

Article 127b 
Functions and organisation 

1. The Executive Board shall assist the Management Board. 

2. The Executive Board shall have the following functions: 

(a)  preparing decisions to be adopted by the Management Board; 

(b) 

ensuring,  together  with  the  Management  Board,  adequate  follow-up  to  the 
findings  and  recommendations  stemming  from  the  internal  or  external  audit 
reports  and  evaluations,  as  well  as  from  investigations  of  the  European  Anti-
fraud Office (OLAF); 

(c)  without  prejudice  to  the  functions  of  the  Executive  Director,  as  set  out  in 
Article  128,  assisting  and  advising 
the 
implementation  of  the  decisions  of  the  Management  Board,  with  a  view  to 
reinforcing supervision of administrative management.  

the  Executive  Director 

in 

3.  When  necessary,  because  of  urgency,  the  Executive  Board  may  take  certain 
provisional  decisions  on  behalf  of  the  Management  Board,  in  particular  on 
administrative management matters, including the suspension of the delegation of the 
appointing authority powers. 

4.  The  Executive  Board  shall  be  composed  of  the  Chairperson  of  the  Management 
Board,  one  representative  of  the  Commission  to  the  Management  Board  and  three 
other members appointed by the Management Board from among its members. The 
Chairperson of the Management Board shall also be the Chairperson of the Executive 
Board.  The  Executive  Director  shall  take  part  in  the  meetings  of  the  Executive 
Board, but shall not have the right to vote.  

5.  The  term  of  office  of  members  of  the  Executive  Board  shall  be  four  years.  The 
term of office of members of the Executive Board shall end when their membership 
of the Management Board ends. 

6. The Executive Board shall hold at least one ordinary meeting every three months. 
In addition, it  shall meet on the initiative of its Chairperson or at the request of its 
members. 

7. The Executive Board shall comply with  the  rules  of  procedure  laid  down by  the 
Management Board. 

SECTION 3 
Executive Director 

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42 

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Article 128 
Functions of the Executive Director 

1. The Agency shall be managed by the Executive Director. The Executive Director 
shall be accountable to the Management Board. 

2. Without prejudice to the powers of the Commission, the Management Board, and 
the  Budget  Committee,  the  Executive  Director  shall  be  independent  in  the 
performance  of  the  duties  and  shall  neither  seek  nor  take  instructions  from  any 
government or from any other body. 

3. The Executive Director shall be the legal representative of the Agency. 

4. The Executive Director shall have in particular the following functions: 

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

(b)  he shall implement the decisions adopted by the Management Board; 

(c)  he  shall  prepare  a  draft  annual  work  programme  indicating  estimated  human 
and  financial  resources  for  each  activity,  and  submit  it  to  the  Management 
Board after consultation of the Commission; 

(d)  he  shall  prepare  a  draft  multiannual  strategic  programme,  including  the 
Agency's  strategy  for  international  cooperation,  and  submit  it  to  the 
Management  Board  after  consultation  of  the  Commission  and  following  an 
exchange of views with the relevant committee in the European Parliament; 

(e)  he shall implement the annual work programme and the multiannual strategic 
programme and report to the Management Board on their implementation; 

(f) 

he shall prepare the annual report on the Agency’s activities and present it to 
the Management Board for approval; 

(g)  he  shall  prepare  a  draft  multiannual  staff  policy  plan  and  submit  it  to  the 

Management Board after consultation of the Commission; 

(h)  he shall prepare an action plan following-up on the conclusions of the internal 
or external audit reports and evaluations, as well as from investigations of the 
European Anti-fraud Office (OLAF), and shall report on progress twice a year 
to the Commission and to the Management Board; 

(i) 

he  shall  protect  the  financial  interests  of  the  Union  by  the  application  of 
preventive  measures  against  fraud,  corruption  and  any  other  illegal  activities, 
by  effective  checks  and,  if  irregularities  are  detected,  by  the  recovery  of  the 
amounts  wrongly  paid  and,  where  appropriate,  by  imposing  effective, 
proportionate and dissuasive administrative and financial penalties; 

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43 

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(j) 

(k) 

he shall prepare an anti-fraud strategy of the Agency and shall present it to the 
Budget Committee for approval; 

in  order  to  ensure  uniform  application  of  the  Regulation,  he  may  refer  to  the 
enlarged  Board  of  Appeal  questions  on  a  point  of  law,  in  particular  if  the 
Boards of Appeal have issued diverging decisions on that point; 

(l) 

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

(m)  he  shall  exercise  the  powers  entrusted  to  him  in  respect  of  the  staff  by  the 

Management Board under Article 124(1)(f); 

(n)  he shall exercise the powers conferred to him by Articles 26(3), 29(5), 30(2), 
45(3),  75(2),  78(5),  79,  79b,  79c,  87(3),  88,  89,  93(4),  119(8)  and  144  in 
accordance with the criteria set out in this Regulation and in the delegated acts 
adopted pursuant to this Regulation; 

(o)  he may delegate his functions. 

5.  The  Executive  Director  shall  be  assisted  by  one  or  more  Deputy  Executive 
Directors.  If  the  Executive  Director  is  absent  or  indisposed,  the  Deputy  Executive 
Director  or  one  of  the  Deputy  Executive  Directors  shall  replace  him  in  accordance 
with the procedure laid down by the Management Board. 

Article 129 
Appointment and removal of the Executive Director and extension of his term 
of office 

1.  The  Executive  Director  shall  be  engaged  as  a  temporary  agent  of  the  Agency 
under Article 2(a) of the Conditions of Employment of Other Servants. 

2. The Executive Director shall be appointed by the Management Board, from a list 
of  candidates  proposed  by  the  Commission,  following  an  open  and  transparent 
selection  procedure.  Before  being  appointed,  the  candidate  selected  by  the 
Management  Board  may  be  invited  to  make  a  statement  before  any  competent 
European Parliament committee and to answer questions put by its members. For the 
purpose of concluding the contract with the Executive Director, the Agency shall be 
represented by the chairperson of the Management Board. 

The  Executive  Director  may  be  removed  from  office  only  upon  a  decision  of  the 
Management Board acting on a proposal from the European Commission. 

3. The term of office of the Executive Director shall be five years. By the end of that 
period, the Commission shall undertake an  assessment which takes into account an 
evaluation  of  the  performance  of  the  Executive  Director  and  the  Agency's  future 
tasks and challenges. 

4. The Management Board, acting on a proposal from the Commission which takes 
into account the assessment referred to in paragraph 3, may extend once the term of 
office of the Executive Director for no more than five years.  

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44 

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5. An Executive Director whose term of office has been extended may not participate 
in another selection procedure for the same post at the end of the overall period. 

6. The Deputy Executive Director or Deputy Executive Directors shall be appointed 
or  removed  from  office  as  provided  for  in  paragraph  2,  after  consultation  of  the 
Executive Director and, where applicable, the Executive Director elect. The term of 
office of the Deputy Executive Director shall be five years. It may be extended once 
for no more than five years by the Management Board acting on a proposal from the 
Commission  as  provided  for  in  paragraph  4,  after  consultation  of  the  Executive 
Director.'; 

(100)  Article 130 is amended as follows: 

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

'(c) a department entrusted with the keeping of the Register;' 

(b) 

the following point (f) is added: 

'(f) any other unit or person appointed by the Executive Director to that effect.'; 

(101) 

In Article 132(2), the third sentence is replaced by the following: 

'In specific cases laid down in accordance with Article 144a(c), the decisions shall be 
taken by a single member.'; 

(102)  Article 133 is replaced by the following: 

'Article 133 
Department entrusted with the keeping of the Register 

1. The Department entrusted with the keeping of the Register shall be responsible for 
taking decisions in respect of entries in the Register. 

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

3. The decisions of the Department shall be taken by one member.'; 

(103)  Article 134 is amended as follows: 

(a)  paragraph 1 is replaced by the following:  

'1. A Cancellation Division shall be responsible for taking decisions in relation 
to: 

(a) 

(b) 

an  application  for  the  revocation  or  declaration  of  invalidity  of  a 
European trade mark, 

a request for the assignment of a European trade mark as provided 
for in Article 18.'; 

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45 

   EN 

(b) 

in paragraph 2, the third sentence is replaced by the following: 

'In  specific  cases laid down  in  accordance  with  Article  144a(c), the decisions 
shall be taken by a single member.'; 

(104)  The following Article 134a is inserted: 

'Article 134a 
General Competence 

Decisions required by this Regulation which do not fall within the competence of an 
examiner,  an  Opposition  Division,  a  Cancellation  Division  or  the  Department 
entrusted  with  the  keeping  of  the  Register,  shall  be  taken  by  any  official  or  unit 
appointed by the Executive Director for that purpose.'; 

(105)  Article 135 is amended as follows: 

(a)  paragraph 1 is replaced by the following: 

'1.  The  Boards  of  Appeal  shall  be  responsible  for  deciding  on  appeals  from 
decisions taken pursuant to Articles 131 to 134a.'; 

(b) 

in paragraph 3, point (a) is replaced by the following:: 

'(a)  by  the  authority  of  the  Boards  of  Appeal  referred  to  in  Article  136(4)(a); 
or'; 

(c)  paragraph 4 is replaced by the following: 

'4. The enlarged Board shall also be responsible for giving reasoned opinions 
on questions of law referred to it by the Executive Director pursuant to Article 
128(4)(k).'; 

(d) 

in paragraph 5, the last sentence is deleted; 

(106)  Article 136 is replaced by the following: 

'Article 136 
Independence of the members of the Boards of Appeal 

1. The President of the Boards of Appeal and the chairpersons of the Boards shall be 
appointed,  in  accordance  with  the  procedure  laid  down  in  Article  129  for  the 
appointment  of  the  Executive  Director,  for  a  term  of  five  years.  They  shall  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.  

2. The term of office of the President of the Boards of Appeal may be extended once 
for  one  additional  five-year  period,  or  until  retirement  age  if  this  age  is  reached 
during the new term of office, after a prior positive evaluation of his performance by 
the Management Board.  

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46 

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3.  The  term  of  office  of  the  chairpersons  of  the  Boards  may  be  extended  for 
additional five-year periods, or until retirement age if this age is reached during the 
new  term  of  office,  after  a  prior  positive  evaluation  of  their  performance  by  the 
Management Board, subject to a favourable opinion by the President of the Boards of 
Appeal. 

4.  The  President  of  the  Boards  of  Appeal  shall  have  the  following  managerial  and 
organisational functions: 

(a) 

chairing  the  authority  of  the  Boards  of  Appeal  responsible  for  laying 
down the rules and organising the work of the Boards; 

(b) 

ensuring the implementation of the authority's decisions; 

(c) 

(d) 

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

forwarding 
requirements, with a view to drawing up the expenditure estimates. 

the  Executive  Director 

the  Boards'  expenditure 

to 

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

5.  The  members  of  the  Boards  of  Appeal  shall  be  appointed  by  the  Management 
Board for a term of five years. Their term of office may be extended for additional 
five-year periods, or until retirement age if that age is reached during the new term of 
office  after  a  prior  positive  evaluation  of  their  performance  by  the  Management 
Board, subject to a favourable opinion by the President of the Boards of Appeal. 

6.  The  members  of  the  Boards  of  Appeal  shall  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 Management Board on the recommendation of the President 
of the Boards of Appeal, after consulting the chairperson of the Board to which the 
member concerned belongs, takes a decision to this effect. 

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

8. Decisions taken by an enlarged Board on appeals or opinions on questions of law 
referred to it by the Executive Director pursuant to Article 135 shall be binding on 
the decision-making instances of the Agency referred to in Article 130. 

9. The President of the Boards of Appeal and the chairpersons and members of the 
Boards  of  Appeal  shall  not  be  examiners  or  members  of  the  Opposition  Divisions, 
the  Department  entrusted  with  the  keeping  of  the  Register  or  Cancellation 
Divisions.'; 

(107)  Article 138 is replaced by the following: 

'Article 138 
Budget Committee 

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1. The Budget Committee shall have the functions assigned to it in this Section. 

2.  Articles  125,  126  and  127(1)  to  (4),  (6)  and  (7)  shall  apply  to  the  Budget 
Committee mutatis mutandis.  

3.  The  Budget  Committee  shall  take  its  decisions  by  an  absolute  majority  of  its 
members. However, a majority of two-thirds of its members shall be required for the 
decisions  which  the  Budget  Committee  is  empowered  to  take  under  Article  140(3) 
and Article 143. In both cases each member shall have one vote.'; 

(108) 

In Article 139 the following paragraph 4 is added: 

'4. The Agency shall prepare on a biannual basis a report to the Commission on its 
financial  situation.  On  the  basis  of  this  report,  the  Commission  shall  review  the 
financial situation of the Agency.'; 

(109)  The following Article 141a is inserted: 

'Article 141a 
Combating fraud 

(EC)  No  1073/1999 

1.  In  order  to  facilitate  combating  fraud,  corruption  and  other  unlawful  activities 
under  Regulation 
the 
Interinstitutional  Agreement  of  25  May  1999  concerning  internal  investigations  by 
the  European  Anti-fraud  Office  (OLAF)  and  adopt  the  appropriate  provisions 
applicable to all the employees of the Agency using the template set out in the Annex 
to that Agreement. 

the  Agency  shall  accede 

to 

2.  The  European  Court  of  Auditors  shall  have  the  power  of  audit,  on  the  basis  of 
documents  and  on 
the  spot,  over  all  grant  beneficiaries,  contractors  and 
subcontractors who have received Union funds from the Agency. 

3. OLAF may carry out investigations, including on-the-spot checks and inspections, 
in accordance with the provisions and procedures laid down in Regulation (EC) No 
1073/1999  and  Regulation  (Euratom,  EC)  No  2185/96  with  a  view  to  establishing 
whether  there  has  been  fraud,  corruption  or  any  other  illegal  activity  affecting  the 
financial interests of the Union in connection with a grant or a contract funded by the 
Agency. 

4.  Without  prejudice  to  paragraphs  1,  2  and  3,  cooperation  agreements  with  third 
countries  and  international  organisations,  contracts,  grant  agreements  and  grant 
decisions of the Agency shall contain provisions expressly empowering the European 
Court of Auditors and OLAF to conduct such audits and investigations, according to 
their respective competences. 

5. The Budget Committee shall adopt an anti-fraud strategy, which is proportionate 
to  the  fraud  risks  having  regard  to  the  cost-benefit  of  the  measures  to  be 
implemented.'; 

(110)  Article 144 is replaced by the following: 

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48 

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'Article 144 
Fees 

1. In addition to the fees provided for in Articles 26(2), 36(1)(c), 41(3), 44(4), 47(1) 
and (3), 49(4), 56(2), 60, 81(3), 82(1), 113(1) and 147(5), fees shall be charged in the 
following cases: 

(a) 

issue of a copy of the certificate of registration; 

(b) 

registration of a license or another right in respect of a European trade mark; 

(c) 

registration  of  a  license  or  another  right  in  respect  of  an  application  for  a 
European trade mark; 

(d) 

cancellation of the registration of a license or another right; 

(e) 

alteration of a registered European trade mark; 

(f) 

issue of an extract from the Register; 

(g) 

inspection of the files; 

(h) 

issue of copies of file documents; 

(i) 

issue of certified copies of the application; 

(j) 

communication of information in a file; 

(k) 

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

2. The amounts of the fees referred to in paragraph 1 shall be fixed at such level as to 
ensure that the revenue in respect thereof is in principle sufficient for the budget of 
the Agency to be balanced while avoiding the accumulation of significant surpluses. 
Without  prejudice  to  Article  139(4),  the  Commission  shall  review  the  level  of  fees 
should  a  significant  surplus  become  recurrent.  If  this  review  does  not  lead  to  a 
reduction or modification in the level of fees which has the effect of preventing the 
further  accumulation  of  a  significant  surplus,  the  surplus  accumulated  after  the 
review shall be transferred to the budget of the Union. 

3. The Executive Director shall lay down the amount to be charged for any services 
provided  by  the  Agency  other  than  those  referred  to  in  paragraph  1  and  for 
publications  issued  by  the  Agency  in  accordance  with  the  criteria  set  out  in  the 
delegated act adopted pursuant to Article 144a(d). The amount of the charge shall not 
exceed  what  is  necessary  to  cover  the  costs  of  the  specific  service  rendered  by  the 
Agency. 

4.  In  accordance  with  the  criteria  set  out  in  the  delegated  act  adopted  pursuant  to 
Article 144a(d), the Executive Director may take the following measures: 

(a)  he may establish which specific methods of payment other than those set out in 
accordance  with  Article  144a(d)  may  be  used,  in  particular  by  means  of 
deposits in current accounts held with the Agency;  

EN 

49 

   EN 

(b)  he may determine the amounts below which an excessive sum paid to cover a 

fee or a charge shall not be refunded; 

(c)  he may waive action for the enforced recovery of any sum due where the sum 

to be recovered is minimal or where such recovery is too uncertain. 

Where the methods of payment referred to in point (a) may be used, the Executive 
Director shall establish the date on which such payments are to be considered to have 
been made to the Agency.'; 

(111)  The following Section 6 is inserted: 

'SECTION 6 
Delegation of powers 

Article 144a 
Delegation of powers 

The  Commission  shall  be  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 163 in order to establish: 

(a) 

the specific criteria of use of the languages referred to in Article 119;  

(b) 

(c) 

(d) 

the  cases  in  which  opposition  and  cancellation  decisions  shall  be  taken  by  a 
single member under Article 132(2) and Article 134(2); 

the details on the organisation of the Boards of Appeal, including the setting up 
and  the  role  of  the  authority  of  the  Boards  of  Appeal  referred  to  in  Article 
135(3)(a), the composition of the enlarged Board and the rules on referrals to it 
as referred to in Article 135(4), and the conditions under which decisions shall 
be taken by a single member in accordance with Article 135(2) and (5); 

the  system  of  fees  and  charges  payable  to  the  Agency  in  accordance  with 
Article  144,  including  the  amount  of  fees,  the  methods  of  payment,  the 
currencies, the due date for fees and charges, the deemed date of payment and 
the consequences of lack of or late payment, and under- and overpayment, the 
services  which  may  be  free  of  charge,  and  the  criteria  under  which  the 
Executive Director may exercise the powers set out in Article 144(3) and (4).'; 

(112) 

In  Article  145,  the  words  'its  Implementing  Regulations'  are  replaced  by  'the 
delegated acts adopted pursuant to this Regulation'; 

(113) 

In Article 147, paragraphs 4, 5 and 6 are replaced by the following: 

'4. The filing of an international application shall be subject to the payment of a fee 
to  the  Agency.  Where  the  international  registration  is  to  be  based  on  a  European 
trade mark once it is registered, the fee shall be due on the date of registration of the 
European  trade  mark.  The  application  shall  be  deemed  not  to  have  been  filed  until 
the required fee has been paid. 

EN 

50 

   EN 

5.  The  international  application  shall  fulfil  the  formal  conditions  established  in 
accordance with Article 161a(a). 

6.  The  Agency  shall  examine  whether  the  international  application  meets  the 
conditions laid down in Article 146 and in paragraphs 1, 3 and 5 of this Article. 

7. The Agency shall forward the international application to the International Bureau 
as soon as possible.'; 

(114)  The following Article 148a is inserted: 

'Article 148a 
Notification of the invalidity of the basic application or registration 

Within  a  period  of  five  years  from  the  date  of  the  international  registration,  the 
Agency shall notify the International Bureau of the facts and decisions affecting the 
validity  of  the  European  trade  mark  application  or  the  European  trade  mark 
registration on which the international registration was based.'; 

(115) 

In Article 149, the following sentence is added: 

'The request shall fulfil the formal conditions established in accordance with Article 
161a(c).'; 

(116)  Article 154(4) is deleted; 

(117)  The following Article 154a is inserted: 

'Article 154a 
Collective and certification marks 

Where  an  international  registration  is  based  on  a  basic  application  or  basic 
registration  relating  to  a  collective  mark,  certification  mark  or  guarantee  mark,  the 
Agency  shall  comply  with  the  procedures  provided  for  in  accordance  with  Article 
161a(f).'; 

(118)  Article 155 is deleted; 

(119)  Article 156 is amended as follows: 

(a) 

in paragraph 2, the words 'six months' are replaced by 'one month'; 

(b)  paragraph 4 is deleted; 

(120)  The following Articles 158a, 158b and 158c are inserted: 

'Article 158a 
Legal effect of registration of transfers 

The  recordal  of  a  change  in  the  ownership  of  the  international  registration  on  the 
International  Register  shall  have  the  same  effect  as  the  entry  of  a  transfer  in  the 
Register pursuant to Article 17. 

EN 

51 

   EN 

Article 158b 
Legal effect of registration of licenses and other rights 

The recordal of a license or a restriction of the holder's right of disposal in respect of 
the international registration in the International Register shall have the same effect 
as  the  registration  of  a  license,  a  right  in  rem,  a  levy  of  execution  or  insolvency 
proceedings in the Register pursuant to Articles 19, 20, 21 and 22 respectively. 

Article 158c 
Examination of requests for registration of transfers, licenses or restrictions of 
the holder's right of disposal 

The Agency shall transmit requests to register a change in ownership, a license or a 
restriction  of  the  holder's  right  of  disposal,  the  amendment  or  cancellation  of  a 
license  or  the  removal  of  a  restriction  of  the  holder's  right  of  disposal  which  have 
been  filed  with  it  to  the  International  Bureau  in  the  cases  specified  in  accordance 
with Article 161a(h).'; 

(121)  Article 159 is amended as follows: 

(a) 

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

'(b)  into  a  designation  of  a  Member  State  party  to  the  Madrid  Protocol, 
provided  that  on  the  date  when  conversion  was  requested  it  was  possible  to 
have designated that Member State directly under the Madrid Protocol. Articles 
112, 113 and 114 shall apply.'; 

(b) 

in paragraph 2, the words 'or the Madrid Agreement' are deleted; 

(122) 

In Title XIII the following Section 4 is inserted: 

'SECTION 4 
Conferral of powers 

Article 161a 
Delegation of powers 

The  Commission  shall  be  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 163 specifying: 

(a) 

the  formal  conditions  of  an  international  application  referred  to  in  Article 
147(5),  the  procedure  for  the  examination  of  the  international  application 
pursuant  to  Article  147(6)  and  the  modalities  of  forwarding  the  international 
application to the International Bureau pursuant to Article 147(4);  

(b) 

the modalities of the notification provided for in Article 148a; 

(c) 

the  formal  conditions  of  a  request  for  territorial  extension  as  referred  to  in 
Article  149(2),  the  procedure  for  the  examination  of  those  conditions  and  the 
the 
modalities  of  forwarding 
International Bureau; 

territorial  extension 

the  request  for 

to 

EN 

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(d) 

the procedure for filing a seniority claim pursuant to Article 153;  

(e) 

(f) 

(g) 

the procedures for the examination of absolute grounds for refusal referred to 
in Article 154 and for the filing and examination of an opposition pursuant to 
Article  156,  including  the  necessary  communications  to  be  made  to  the 
International Bureau; 

the  procedures  with  regard  to  the  international  registrations  referred  to  in 
Article 154a; 

the  cases  where  the  Agency  shall  notify  the  International  Bureau  of  the 
invalidation  of  the  effects  of  an  international  registration  pursuant  to  Article 
158 and the information that such notification shall contain;  

(h) 

the modalities of transmission of the requests referred to in Article 158c to the 
International Bureau; 

(i) 

(j) 

(k) 

the conditions with which a request for conversion pursuant to Article 159(1) 
shall comply; 

the formal conditions of an application for transformation referred to in Article 
161 and the procedures for such a transformation; 

the  modalities  of  communications  between  the  Agency  and  the  International 
Bureau, including the communications to be made pursuant to Articles 147(4), 
148a, 153(2) and 158c.'; 

(123)  Article 162 is deleted; 

(124)  Article 163 is deleted; 

(125)  The following Article 163a is inserted: 

'Article 163a 
Exercise of the delegation 

1. The power to adopt delegated acts is conferred on the Commission subject to the 
conditions laid down in this Article. 

2. The delegation of power referred to in Articles 24a, 35a, 45a, 49a, 57a, 65a, 74a, 
74k, 93a, 114a, 144a and 161a shall be conferred for an indeterminate period of time.  

3. The delegation of power referred to in paragraph 2 may be revoked at any time by 
the European Parliament or by the Council. A decision of revocation shall put an end 
to the delegation of the power specified in that decision. It shall take effect the day 
following  the  publication  of  the  decision  in  the  Official  Journal  of  the  European 
Union  or  at  a  later  date  specified  therein.  It  shall  not  affect  the  validity  of  any 
delegated acts already in force. 

4. As soon as it adopts a delegated act, the Commission shall notify it simultaneously 
to the European Parliament and to the Council. 

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5.  A  delegated  act  adopted  pursuant  to  Articles  24a,  35a,  45a,  49a,  57a,  65a,  74a, 
74k,  93a,  114a,  144a  and  161a  shall  enter  into  force  only  if  no  objection  has  been 
expressed  either  by  the  European  Parliament  or  the  Council  within  a  period  of  2 
months of notification of that act to the European Parliament and the Council or if, 
before the expiry of that period, the European Parliament and the Council have both 
informed the Commission that they will not object. That period shall be extended by 
2 months at the initiative of the European Parliament or the Council.'; 

(126)  Article 164 is deleted; 

(127)  The following Article 165a is inserted: 

'Article 165a 
Evaluation and review 

1.  By  2019,  and  every  five  years  thereafter,  the  Commission  shall  commission  an 
evaluation on the implementation of this Regulation.  

2.  The  evaluation  shall  review  the  legal  framework  for  cooperation  between  the 
Agency  and  the  central  industrial  property  offices  of  the  Member  States  and  the 
Benelux Office for Intellectual Property, with a particular attention to the financing 
mechanism.  The  evaluation  shall  further  assess  the  impact,  effectiveness  and 
efficiency  of  the  Agency  and  its  working  practices.  The  evaluation  shall,  in 
particular, address the possible need to modify the mandate of the Agency, and the 
financial implications of any such modification. 

3. The Commission shall forward the evaluation report together with its conclusions 
drawn  on  the  report  to  the  European  Parliament,  the  Council  and  the  Management 
Board. The findings of the evaluation shall be made public. 

4.  On  the  occasion  of  every  second  evaluation,  there  shall  be  an  assessment  of  the 
results achieved by the Agency having regard to its objectives, mandate and tasks. If 
the Commission considers that the continuation of the Agency is no longer justified 
with  regard  to  its  assigned  objectives,  mandate  and  tasks,  it  may  propose  that  this 
Regulation be repealed.' 

Article 2 

This  Regulation  shall  enter  into  force  on  [specify  date  90  days  after  its  publication  in  the 
Official Journal of the European Union]. 

Article 1(9), (10)(b), (21), (22), (23), (25), (26), (27), (29), (30), (31), (34), (37), (38), (41), 
(44), (46), (57), (58), (59), (60), (61), (63), (64), (66), (67), (68), (69), (70), (71), (72), (73), 
(75), (76), (77), (78), (79), (88), (89), (93), (94), (99) insofar as it relates to Article 128(4)(n), 
(101), (103)(b), (105)(d), (112), (113), (114), (115), (117), (120), (123) and (124) shall apply 
from [specify the first day of the first month after 18 months following the date specified in 
the first paragraph]. 

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

EN 

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Done at Brussels,  

For the European Parliament 
The President 

For the Council 
The President 

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