Selected instruments relating to the European Union trade mark.
Date: 2019-05-21
Institutions: European Union Intellectual Property Office
Subjects: EU trade mark, European Union Intellectual Property Office, copyright, intellectual property, registered trade mark, trade-mark law

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Luxembourg: Publications Office of the European Union, 2018

© European Union, 2018

Print 
PDF 

ISBN 978-92-9156-244-2 
ISBN 978-92-9156-237-4 

doi:10.2814/988342 
doi:10.2814/700462 

TB-04-18-032-EN-C 
TB-04-18-032-EN-N

Reuse is authorised provided the source is acknowledged. 

The reuse policy of European Commission documents is regulated by Decision 2011/833/EU  
(OJ L 330, 14.12.2011, p. 39).

Selected 
instruments 
relating to the 
European Union 
trade mark
European Union 
Intellectual 
Property Office 
(EUIPO)

Introduction 

Over  the  past  decade  the  EUIPO  has  been  working  intensively  with  national  and 
regional IP offices in the EU in order to improve and harmonise tools and practices in 
the EU trade mark and design system. 

This effort has been complemented and reinforced by the legislative measures aimed 
at modernising and strengthening the trade mark system, making it more accessible 
and efficient and ensuring greater complementarity and closer cooperation between 
the offices within the two-tier system of national and EU rights.

The 2016 and 2017 amendments to the EU legal instruments were quite extensive 
and have affected many of their provisions. Not only were the reformed regulations 
renumbered and consolidated, but also new instruments were created and the appli-
cable rules were reorganised and redistributed among them. 

In order to make these changes more accessible to users the EUIPO has decided to 
launch a new edition of the monolingual version of the Selected instruments relating 
to the European Union trade mark, where all the changes have been incorporated.

It contains the consolidated texts of the European Union trade mark regulation, the 
delegated regulation and the implementing regulation, as well as the most relevant 
Office  decisions  that  complement  them.  Some  texts  which  are  no  longer  relevant 
have been omitted. 

In addition, the Directive approximating the laws of the Member States relating to 
trade marks and the most relevant provisions of the Paris Convention, the Madrid 
Protocol and the TRIPS Agreement on trade marks have been included.

The combined impact of convergence and legislative change is intended to produce 
a system that caters better for the needs of businesses of all sizes, whether they are 
taking advantage of the single market to grow, or need a national registration.

This updated edition of the monolingual version, sets out to make the texts more 
usable, easier accessible and more transparent, for the benefit of all professionals 
who need to apply EU trade mark law as part of their daily work, be they examiners, 
practitioners, judges, academics or businesses.

Christian Archambeau 
Executive Director of the European Union Intellectual Property Office

Disclaimer: The only official texts of the regulations are those published in the Official Journal of the European 
Union. These official texts are not completely free of clerical errors or translation discrepancies. In this publication, 
only obvious spelling and punctuation errors have been removed. The left column contains cross-references to 
other pertinent provisions. Articles already cited in a provision are, however, not included in the references again.

TABLE OF CONTENTS

The EUTM Regulation 
Regulation (EU) 2017/1001 of the European Parliament and of the Council 
of 14 June 2017 on the European Union trade mark 

The EC Implementing and Delegated Regulations 
Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 
supplementing Regulation (EU) 2017/1001 of the European Parliament and 
of the Council on the European Union trade mark, and repealing Delegated 
Regulation (EU) 2017/1430 

Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 
laying down detailed rules for implementing certain provisions of Regulation 
(EU) 2017/1001 of the European Parliament and of the Council on the 
European Union trade mark, and repealing Implementing Regulation (EU) 
2017/1431 

The TM Directive 
Directive (EU) 2015/2436 of the European Parliament and of the Council  
of 16 December 2015 to approximate the laws of the Member States 
relating to trade marks (Recast) 

International Treaties 
Paris Convention for the Protection of Industrial Property of 20 March 1883 

Agreement on trade-related aspects of intellectual property rights of 15 April 
1994 as amended on 23 January 2017 

Protocol Relating to the Madrid Agreement concerning the International 
Registration of Marks adopted at Madrid on June 27, 1989, 
as amended on October 3, 2006, and on November 12, 2007 

Decisions of the Executive Director of the Office 
Decision No EX-19-1 of the Executive Director of the Office of 18 January 
2019 on communication by electronic means 

Decision No EX-17-3 of the Executive Director of 18 September 2017 concerning 
the formal requirements of a priority claim for a European Union trade mark 
or a seniority claim for a European Union trade mark or a designation of the 
European Union under the Madrid Protocol (consolidated version) 

Decision No EX-17-7 of the Executive Director of 18 September 2017 on 
payment methods of fees and charges and determining the insignificant 
amount of fees and charges (consolidated version) 

Decision No EX-17-6 of the Executive Director of 22 September 2017 
on technical specifications for annexes submitted on data carriers 
(consolidated version) 

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4

The EUTM 
Regulation

 
The EUTM Regulation

5

Regulation (EU) 2017/1001 of the European 
Parliament and of the Council 

of 14 June 2017 

on the European Union trade mark 

(codification) 

(Text with EEA relevance)

6

REGULATION (EU) 2017/1001

TABLE OF CONTENTS (NOT PART OF THE OFFICIAL TEXT)

EU trade mark 
Office 
Capacity to act 

CHAPTER I 
GENERAL PROVISIONS 
Article 1 
Article 2 
Article 3 
CHAPTER II 
THE LAW RELATING TO TRADE MARKS 
SECTION 1 
Definition of an EU trade mark and obtaining an EU trade mark 
Article 4 
Article 5 
Article 6 
Article 7 
Article 8 
SECTION 2 
Effects of an EU trade mark 
Article 9 
Article 10 

Signs of which an EU trade mark may consist 
Persons who can be proprietors of EU trade marks 
Means whereby an EU trade mark is obtained 
Absolute grounds for refusal 
Relative grounds for refusal 

Article 11 
Article 12 
Article 13 

Article 14 
Article 15 
Article 16 

Rights conferred by an EU trade mark 
Right to prohibit preparatory acts in relation to the use of 
packaging or other means 
Date from which rights against third parties prevail 
Reproduction of an EU trade mark in a dictionary 
Prohibition of the use of an EU trade mark registered in the 
name of an agent or representative 
Limitation of the effects of an EU trade mark 
Exhaustion of the rights conferred by an EU trade mark 
Intervening right of the proprietor of a later registered trade 
mark as a defence in infringement proceedings 
34
Complementary application of national law relating to infringement  35

33
33
34

32
33
33

Use of an EU trade mark 

Article 17 
SECTION 3 
Use of an EU trade mark 
Article 18 
SECTION 4 
EU trade marks as objects of property 
Article 19 
Article 20 
Article 21 
Article 22 
Article 23 

Dealing with EU trade marks as national trade marks 
Transfer 
Transfer of a trade mark registered in the name of an agent 
Rights in rem 
Levy of execution 

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26

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29

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31

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35

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The EUTM Regulation

7

Article 24 
Article 25 
Article 26 
Article 27 
Article 28 
Article 29 

Insolvency proceedings 
Licensing 
Procedure for entering licences and other rights in the Register 
Effects vis-à-vis third parties 
The application for an EU trade mark as an object of property 
Procedure for cancelling or modifying the entry in the Register 
of licences and other rights 

Filing of applications 
Conditions with which applications must comply 
Date of filing 
Designation and classification of goods and services 

CHAPTER III 
APPLICATION FOR EU TRADE MARKS 
SECTION 1 
Filing of applications and the conditions which govern them 
Article 30 
Article 31 
Article 32 
Article 33 
SECTION 2 
Priority 
Article 34 
Article 35 
Article 36 
Article 37 
SECTION 3 
Exhibition priority 
Article 38 
SECTION 4 
Seniority of a national trade mark 
Article 39 

Right of priority 
Claiming priority 
Effect of priority right 
Equivalence of Union filing with national filing 

Exhibition priority 

Article 40 

Claiming seniority of a national trade mark in an application for 
an EU trade mark or subsequent to the filing of the application 
Claiming seniority of a national trade mark after registration of 
an EU trade mark 

Examination of the conditions of filing 
Examination as to absolute grounds for refusal 

CHAPTER IV 
REGISTRATION PROCEDURE 
SECTION 1 
Examination of applications 
Article 41 
Article 42 
SECTION 2 
Search 
Article 43 
SECTION 3 
Publication of the application 
Article 44 

Search report 

Publication of the application 

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40
41
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59
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58

Registration 

55
55
55
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57

Withdrawal, restriction and amendment of the application 
Division of the application 

Duration of registration 
Renewal 
Alteration 
Change of the name or address 
Division of the registration 

SECTION 4 
Observations by third parties and opposition 
Observations by third parties 
Article 45 
Opposition 
Article 46 
Examination of opposition 
Article 47 
Article 48 
Delegation of powers 
SECTION 5 
Withdrawal, restriction, amendment and division of the application 
Article 49 
Article 50 
SECTION 6 
Registration 
Article 51 
CHAPTER V 
DURATION, RENEWAL, ALTERATION AND DIVISION OF EU TRADE MARKS  60
60
Article 52 
60
Article 53 
62
Article 54 
62
Article 55 
63
Article 56 
CHAPTER VI 
SURRENDER, REVOCATION AND INVALIDITY 
SECTION 1 
Surrender  
Article 57 
SECTION 2 
Grounds for revocation 
Article 58 
SECTION 3 
Grounds for invalidity 
Article 59 
Article 60 
Article 61 
SECTION 4 
Consequences of revocation and invalidity 
Article 62 
SECTION 5 
Proceedings in the office in relation to revocation or invalidity 
Article 63 
Article 64 
Article 65 

Application for revocation or for a declaration of invalidity 
Examination of the application 
Delegation of powers 

Absolute grounds for invalidity 
Relative grounds for invalidity 
Limitation in consequence of acquiescence 

Consequences of revocation and invalidity 

Grounds for revocation 

67
67
67
68

70
70
70
71

Surrender 

66
66

65
65

69
69

65

 
The EUTM Regulation

9

72
72
Decisions subject to appeal 
Persons entitled to appeal and to be parties to appeal proceedings  72
72
Time limit and form of appeal 
73
Revision of decisions in ex parte cases 
73
Examination of appeals 
73
Decisions in respect of appeals 
74
Actions before the Court of Justice 
74
Delegation of powers 

CHAPTER VII 
APPEALS 
Article 66 
Article 67 
Article 68 
Article 69 
Article 70 
Article 71 
Article 72 
Article 73 
CHAPTER VIII 
SPECIFIC PROVISIONS ON EUROPEAN UNION COLLECTIVE MARKS 
AND CERTIFICATION MARKS 
SECTION 1 
EU collective marks 
Article 74 
Article 75 
Article 76 
Article 77 
Article 78 
Article 79 

EU collective marks 
Regulations governing use of an EU collective mark 
Refusal of the application 
Observations by third parties 
Use of marks 
Amendment of the regulations governing use of the EU 
collective mark 
Persons who are entitled to bring an action for infringement 
Grounds for revocation 
Grounds for invalidity 

Article 80 
Article 81 
Article 82 
SECTION 2 
EU certification marks 
Article 83 
Article 84 
Article 85 
Article 86 
Article 87 
Article 88 

Article 89 
Article 90 
Article 91 
Article 92 
Article 93 

EU certification marks 
Regulations governing use of an EU certification mark 
Refusal of the application 
Observations by third parties 
Use of the EU certification mark 
Amendment of the regulations governing use of the EU 
certification mark 
Transfer 
Persons who are entitled to bring an action for infringement 
Grounds for revocation 
Grounds for invalidity 
Conversion 

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10

Decisions and communications of the Office 
Examination of the facts by the Office of its own motion 
Oral proceedings 
Taking of evidence 
Notification 
Notification of loss of rights 
Communications to the Office 
Time limits 
Correction of errors and manifest oversights 
Revocation of decisions 
Restitutio in integrum 
Continuation of proceedings 
Interruption of proceedings 
Reference to general principles 
Termination of financial obligations 

CHAPTER IX 
PROCEDURE 
SECTION 1 
General provisions 
Article 94 
Article 95 
Article 96 
Article 97 
Article 98 
Article 99 
Article 100 
Article 101 
Article 102 
Article 103 
Article 104 
Article 105 
Article 106 
Article 107 
Article 108 
SECTION 2 
Costs 
Article 109 
Article 110 
SECTION 3 
Information which may be made available to the public and to the authorities 
of the Member States 
Article 111 
Article 112  Database 
Article 113  Online access to decisions 
Article 114 
Article 115 
Article 116 
Article 117 
Article 118 
SECTION 4 
Representation 
Article 119 
Article 120 
Article 121  Delegation of powers 

Inspection of files 
Keeping of files 
Periodical publications 
Administrative cooperation 
Exchange of publications 

Costs 
Enforcement of decisions fixing the amount of costs 

General principles of representation 
Professional representatives 

Register of EU trade marks 

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The EUTM Regulation

11

CHAPTER X 
JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING TO EU 
TRADE MARKS 
SECTION 1 
Application of Union rules on jurisdiction and the recognition and enforcement 
of judgments in civil and commercial matters 
Article 122 

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

SECTION 2 
Disputes concerning the infringement and validity of EU trade marks 
Article 123 
Article 124 
Article 125 
Article 126 
Article 127 
Article 128 
Article 129 
Article 130 
Article 131 
Article 132 
Article 133 

EU trade mark courts 
Jurisdiction over infringement and validity 
International jurisdiction 
Extent of jurisdiction 
Presumption of validity — Defence as to the merits 
Counterclaims 
Applicable law 
Sanctions 
Provisional and protective measures 
Specific rules on related actions 
Jurisdiction of EU trade mark courts of second instance — 
Further appeal 

SECTION 3 
Other disputes concerning EU trade marks 
Article 134 

Supplementary provisions on the jurisdiction of national courts 
other than EU trade mark courts 
Article 135  Obligation of the national court 
CHAPTER XI 
EFFECTS ON THE LAWS OF THE MEMBER STATES 
SECTION 1 
Civil actions on the basis of more than one trade mark 
Article 136 

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

Prohibition of use of EU trade marks 
Prior rights applicable to particular localities 

SECTION 2 
Application of national laws for the purpose of prohibiting the use of EU trade 
marks 
Article 137 
Article 138 
SECTION 3 
Conversion into a national trade mark application 
Article 139 
Article 140 

Request for the application of national procedure 
Submission, publication and transmission of the request for 
conversion 

104

104

104

105
105
105
106
106
107
107
108
108
109
109

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110

111

111

111

112
112
112

113
113

114

Formal requirements for conversion 

12

Article 141 
CHAPTER XII 
THE OFFICE 
SECTION 1 
General provisions 
Article 142 
Article 143 
Article 144 
Article 145 
Article 146 
Article 147 
Article 148 
Article 149 
Article 150 

Legal status 
Staff 
Privileges and immunities 
Liability 
Languages 
Publication and entries in the Register 
Translation services 
Transparency 
Security rules on the protection of classified and sensitive non-
classified information 

Tasks of the Office 
Cooperation to promote convergence of practices and tools 

SECTION 2 
Tasks of the office and cooperation to promote convergence 
Article 151 
Article 152 
SECTION 3 
Management Board 
Article 153 
Article 154 
Article 155 
Article 156  Meetings 
SECTION 4 
Executive Director 
Article 157 
Article 158 

Functions of the Management Board 
Composition of the Management Board 
Chairperson of the Management Board 

Functions of the Executive Director 
Appointment and removal of the Executive Director and 
extension of term of office 

Competence 
Examiners 

SECTION 5 
Implementation of procedures  
Article 159 
Article 160 
Article 161  Opposition Divisions 
Article 162  Department in charge of the Register 
Cancellation Divisions 
Article 163 
Article 164  General Competence 
Article 165 
Article 166 
Article 167 
Article 168  Delegation of powers 
Article 169 

Exclusion and objection 

Boards of Appeal 
Independence of the members of the Boards of Appeal 
Presidium of the Boards of Appeal and Grand Board 

115

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116
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The EUTM Regulation

13

135

137
137
137
139
140
140
141
141
142
142
143
144

Budget Committee 
Budget 
Preparation of the budget 
Audit and control 
Combating fraud 
Auditing of accounts 
Financial provisions 
Fees and charges and due date 
Payment of fees and charges 

Article 170  Mediation centre 
SECTION 6 
Budget and financial control 
Article 171 
Article 172 
Article 173 
Article 174 
Article 175 
Article 176 
Article 177 
Article 178 
Article 179 
Article 180  Deemed date of payment 
Article 181 
CHAPTER XIII 
INTERNATIONAL REGISTRATION OF MARKS 
SECTION I 
General provisions 
Article 182 
SECTION 2 
International registration on the basis of applications for an EU trade mark 
145
and of EU trade marks 
145
Article 183 
146
Article 184 
Article 185 
148
Article 186  Notification of the invalidity of the basic application or registration 148
Article 187 

Filing of an international application 
Form and contents of the international application 
Recordal in the files and in the Register 

Insufficient payments and refund of insignificant amounts 

Application of provisions 

145
145

145

Request for territorial extension subsequent to international 
registration 
International fees 

Article 188 
SECTION 3 
International registrations designating the Union 
Article 189 
Article 190 
Article 191 
Article 192 
Article 193  Designation of goods and services and examination as to 

Effects of international registrations designating the Union 
Publication 
Seniority claimed in an international application 
Seniority claimed before the Office 

148
149

149
149
150
150
151

Article 194 
Article 195 
Article 196  Opposition 
Article 197 
Article 198 
Article 199 

absolute grounds for refusal 
Collective and certification marks 
Search 

152
153
153
154
Replacement of an EU trade mark by an international registration  154
155
Invalidation of the effects of an international registration 
155
Legal effect of registration of transfers 

14

155

155

Article 202 

156
157
158
158
159

Article 200 
Article 201 

Transformation 
Communication with the International Bureau 

Legal effect of registration of licences and other rights 
Examination of requests for registration of transfers, licences or 
restrictions of a holder’s right of disposal 
Conversion of a designation of the Union through an 
international registration into a national trade mark application 
or into a designation of Member States 
Article 203  Use of a mark subject of an international registration 
Article 204 
Article 205 
Article 206  Use of languages 
CHAPTER XIV 
FINAL PROVISIONS 
Article 207 
Article 208 
Article 209 
Article 210 
Article 211 
Article 212 
ANNEX I 
AMOUNT OF FEES 
A. The fees to be paid to the Office under this Regulation shall be as follows 
(in EUR): 
B. Fees to be paid to the International Bureau 
ANNEX II 
REPEALED REGULATION WITH LIST OF ITS SUCCESSIVE AMENDMENTS  168
ANNEX III 
CORRELATION TABLE 

Committee Procedure 
Exercise of the delegation 
Provisions relating to the enlargement of the Union 
Evaluation and review 
Repeal 
Entry into force 

159
159
159
160
161
162
162

163
166

163

169

 
The EUTM Regulation

15

REGULATION (EU) 2017/1001 OF THE 
EUROPEAN PARLIAMENT AND OF THE COUNCIL 
of 14 June 2017 on the European Union trade mark

(codification)

(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 the first paragraph of Article 118 thereof,

Having regard to the proposal from the European Commission,

After transmission of the draft legislative act to the national parliaments, Act-
ing in accordance with the ordinary legislative procedure (1), 

Whereas:

(1)  Council Regulation (EC) No 207/2009 (2) has been substantially amended 
several  times  (3).  In  the  interests  of  clarity  and  rationality,  that  Regulation 
should be codified.

(2)  Council Regulation (EC) No 40/94 (4), which was codified in 2009 as Regu-
lation (EC) No 207/2009, created a system of trade mark protection specific 
to the Union which provided for the protection of trade marks at the level of 
the Union, in parallel to the protection of trade marks available at the level of 
the Member States in accordance with the national trade mark systems, har-
monised by Council Directive 89/104/EEC (5), which was codified as Directive 
2008/95/EC of the European Parliament and of the Council (6).

(1)  Position of the European Parliament of 27 April 2017 (not yet published in the Official Journal) and 

decision of the Council of 22 May 2017.

(2)  Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 

L 78, 24.3.2009, p. 1).

(3)  See Annex II.

(4)  Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ L 11, 

14.1.1994, p. 1).

(5)  First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member 

States relating to trade marks (OJ L 40, 11.2.1989, p. 1).

(6)  Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approxi-

mate the laws of the Member States relating to trade marks (OJ L 299, 8.11.2008, p. 25).

16

REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

(3) 
It  is  desirable  to  promote  throughout  the  Union  a  harmonious  develop-
ment of economic activities and a continuous and balanced expansion by com-
pleting an internal market which functions properly and offers conditions which 
are similar to those obtaining in a national market. In order to establish a mar-
ket of this kind and make it increasingly a single market, not only should bar-
riers to free movement of goods and services be removed and arrangements 
be instituted which ensure that competition is not distorted, but, in addition, 
legal conditions should be laid down which enable undertakings to adapt their 
activities to the scale of the Union, whether in manufacturing and distributing 
goods or in providing services. For those purposes, trade marks enabling the 
products and services of undertakings to be distinguished by identical means 
throughout the entire Union, regardless of frontiers, should feature amongst 
the legal instruments which undertakings have at their disposal.

(4)  For the purpose of pursuing the Union’s said objectives it would appear 
necessary to provide for Union arrangements for trade marks whereby under-
takings can by means of one procedural system obtain EU trade marks to which 
uniform  protection  is  given  and  which  produce  their  effects  throughout  the 
entire area of the Union. The principle of the unitary character of the EU trade 
mark thus stated should apply unless otherwise provided for in this Regulation.

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

(6)  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 complement and alternative to the protection of trade marks at the level 
of the Member States.

(7)  The Union law relating to trade marks nevertheless does not replace the 
laws of the Member States on trade marks. It would not in fact appear to be 
justified to require undertakings to apply for registration of their trade marks 
as EU trade marks.

(8)  National  trade  marks  continue  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 each person seeking trade mark protection to 

The EUTM Regulation

17

decide whether the protection is sought only as a national trade mark in one or 
more Member States, or only as an EU trade mark, or both.

(9)  The rights in an EU trade mark should not be obtained otherwise than by 
registration, and registration should be refused in particular if the trade mark 
is not distinctive, if it is unlawful or if it conflicts with earlier rights.

(10)  A sign should be permitted to be represented in any appropriate form using 
generally available technology, and thus not necessarily by graphic means, as 
long  as  the  representation  is  clear,  precise,  self-contained,  easily  accessible, 
intelligible, durable and objective.

(11)  The protection afforded by an EU trade mark, the function of which is in 
particular  to  guarantee  the  trade  mark  as  an  indication  of  origin,  should  be 
absolute in the case of identity between the mark and the sign and the goods 
or  services.  The  protection  should  apply  also  in  cases  of  similarity  between 
the mark and the sign and the goods or services. An interpretation should be 
given for the concept of similarity in relation to the likelihood of confusion. The 
likelihood of confusion, the appreciation of which depends on numerous ele-
ments and, in particular, on the recognition of the trade mark on the market, 
the association which can be made with the used or registered sign, the degree 
of similarity between the trade mark and the sign and between the goods or 
services identified, should constitute the specific condition for such protection.

(12)  In order to ensure legal certainty and full consistency with the principle 
of priority, under which a registered earlier trade mark takes precedence over 
later registered trade marks, it is necessary to provide that the enforcement 
of  rights  conferred  by  an  EU  trade  mark  should  be  without  prejudice  to  the 
rights of proprietors acquired prior to the filing or priority date of the EU trade 
mark. This is in conformity with Article 16(1) of the Agreement on trade-related 
aspects of intellectual property rights of 15 April 1994.

(13)  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 such a way that a link is established between the company bearing the 
name and the goods or services coming from that company. Infringement of 
an EU 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.

(14)  In order to ensure legal certainty and full consistency with specific Union 
legislation, it is appropriate to provide that the proprietor of an EU trade mark 
should  be  entitled  to  prohibit  a  third  party  from  using  a  sign  in  compara-

18

REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

tive  advertising  where  such  comparative  advertising  is  contrary  to  Directive 
2006/114/EC of the European Parliament and of the Council (7).

(15)  In  order  to  ensure  trade  mark  protection  and  combat  counterfeiting 
effectively,  and  in  line  with  international  obligations  of  the  Union  under  the 
framework of the World Trade Organisation (WTO), in particular Article V of the 
General Agreement on Tariffs and Trade (GATT) on freedom of transit and, as 
regards generic medicines, the ‘Declaration on the TRIPS Agreement and pub-
lic health’ adopted by the Doha WTO Ministerial Conference on 14 November 
2001, the proprietor of an EU trade mark should be entitled to prevent third 
parties from bringing goods, in the course of trade, into the Union without being 
released for free circulation there, where such goods come from third countries 
and bear without authorisation a trade mark which is identical or essentially 
identical with the EU trade mark registered in respect of such goods.

(16)  To this effect, it should be permissible for EU trade mark proprietors to 
prevent the entry of infringing goods and their placement in all customs situa-
tions, including transit, transhipment, warehousing, free zones, temporary stor-
age, inward processing or temporary admission, also when such goods are not 
intended to be placed on the market of the Union. In performing customs con-
trols, the customs authorities should make use of the powers and procedures 
laid down in Regulation (EU) No 608/2013 of the European Parliament and the 
Council (8), also at the request of the right holders. In particular, the customs 
authorities should carry out the relevant controls on the basis of risk analysis 
criteria.

(17)  In order to reconcile the need to ensure the effective enforcement of trade 
mark  rights  with  the  necessity  to  avoid  hampering  the  free  flow  of  trade  in 
legitimate goods, the entitlement of the proprietor of the EU trade mark should 
lapse where, during the subsequent proceedings initiated before the European 
Union trade mark court (‘EU trade mark court’) competent to take a substantive 
decision on whether the EU trade mark has been infringed, the declarant or the 
holder of the goods is able to prove that the proprietor of the EU trade mark is 
not entitled to prohibit the placing of the goods on the market in the country of 
final destination.

(18)  Article 28 of Regulation (EU) No 608/2013 provides that a right holder is 
to be liable for damages towards the holder of the goods where, inter alia, the 

(7)  Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 con-

cerning misleading and comparative advertising (OJ L 376, 27.12.2006, p. 21).

(8)  Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 con-
cerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) 
No 1383/2003 (OJ L 181, 29.6.2013, p. 15).

The EUTM Regulation

19

goods in question are subsequently found not to infringe an intellectual prop-
erty right.

(19)  Appropriate measures should be taken with a view to ensuring the smooth 
transit  of  generic  medicines.  With  respect  to  international  non-proprietary 
names  (INN)  as  globally  recognised  generic  names  for  active  substances  in 
pharmaceutical preparations, it is vital to take due account of the existing limi-
tations on the effect of EU trade mark rights. Consequently, the proprietor of an 
EU trade mark should not have the right to prevent a third party from bringing 
goods into the Union without being released for free circulation there, based 
upon similarities between the INN for the active ingredient in the medicines and 
the trade mark.

(20)  In order to enable proprietors of EU trade marks to combat counterfeiting 
effectively, they should be entitled to prohibit the affixing of an infringing mark 
to goods and preparatory acts carried out prior to the affixing.

(21)  The  exclusive  rights  conferred  by  an  EU  trade  mark  should  not  entitle 
the proprietor to prohibit the use of signs or indications by third parties which 
are used fairly and thus in accordance with honest practices in industrial and 
commercial matters. In order to ensure equal conditions for trade names and 
EU trade marks in the event of conflicts, given that trade names are regularly 
granted unrestricted protection against later trade marks, such use should be 
only considered to include the use of the personal name of the third party. It 
should further permit the use of descriptive or non-distinctive signs or indica-
tions in general. Furthermore, the proprietor should not be entitled to prevent 
the fair and honest use of the EU trade mark for the purpose of identifying or 
referring  to  the  goods  or  services  as  those  of  the  proprietor.  Use  of  a  trade 
mark by third parties to draw the consumer’s attention to the resale of genuine 
goods that were originally sold by or with the consent of the proprietor of the 
EU trade mark in the Union should be considered as being fair as long as it is 
at the same time in accordance with honest practices in industrial and com-
mercial matters. Use of a trade mark by third parties for the purpose of artis-
tic expression should be considered as being fair as long as it is at the same 
time  in  accordance  with  honest  practices  in  industrial  and  commercial  mat-
ters. Furthermore, this Regulation should be applied in a way that ensures full 
respect for fundamental rights and freedoms, and in particular the freedom of 
expression.

(22)  It follows from the principle of free movement of goods that it is essential 
that the proprietor of an EU trade mark not be entitled to prohibit its use by 
a third party in relation to goods which have been put into circulation in the 
European  Economic  Area,  under  the  trade  mark,  by  him  or  with  his  consent, 

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

save where there exist legitimate reasons for the proprietor to oppose further 
commercialisation of the goods.

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

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

(25)  For reasons of equity and legal certainty, the use of an EU trade mark in 
a form that differs in elements which do not alter the distinctive character of 
that 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.

(26)  An EU trade mark is to be regarded as an object of property which exists 
separately from the undertakings whose goods or services are designated by 
it. Accordingly, it should be capable of being transferred, of being charged as 
security in favour of a third party and of being the subject matter of licences.

(27)  Administrative measures are necessary at Union level for implementing in 
relation to every trade mark the trade mark law laid down by this Regulation. It 
is therefore essential, while retaining the Union’s existing institutional structure 
and balance of powers, to provide for a European Union Intellectual Property 
Office (‘the Office’) which is independent in relation to technical matters and 
has  legal,  administrative  and  financial  autonomy.  To  this  end  it  is  necessary 
and appropriate that the Office should be a body of the Union having legal per-
sonality and exercising the powers which are conferred on it by this Regulation, 
and that it should operate within the framework of Union law without detract-
ing from the competences exercised by the Union institutions.

(28)  EU trade mark protection is granted in relation to specific goods or ser-
vices whose nature and number determine the extent of protection afforded 
to the trade mark proprietor. It is therefore essential to lay down rules for the 
designation and classification of goods and services in this Regulation 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 authori-
ties and economic operators, on the basis of the application alone, to determine 

The EUTM Regulation

21

the extent of the protection applied for. The use of general terms should be 
interpreted as only including all goods and services clearly covered by the lit-
eral meaning of the term. Proprietors of EU trade marks, which because of the 
practice of the Office prior to 22 June 2012 were registered in respect of the 
entire heading of a class of 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, should be given 
the possibility to adapt their lists 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 avoid unnecessary delays in registering an EU trade mark, it 
is  appropriate  to  lay  down  a  regime  of  optional  EU  and  national  trade  mark 
searches that should be flexible in terms of user needs and preferences. The 
optional EU and national trade mark searches should be complemented by the 
making available of all- encompassing, fast and powerful search engines for 
the use of the public free of charge within the context of cooperation between 
the  Office  and  the  central  industrial  property  offices  of  the  Member  States, 
including the Benelux Office for Intellectual Property.

(30) It is necessary to ensure that parties who are affected by decisions made 
by the Office are protected by the law in a manner which is suited to the spe-
cial character of trade mark law. To that end, provision should be made for an 
appeal to lie from decisions of the various decision-making instances of the 
Office. A Board of Appeal of the Office should decide on the appeal. Decisions 
of the Boards of Appeal should, in turn, be amenable to actions before the Gen-
eral Court, which has jurisdiction to annul or to alter the contested decision.

(31)  In order to ensure the protection of EU trade marks the Member States 
should designate, having regard to their own national system, as limited a num-
ber as possible of national courts of first and second instance having jurisdic-
tion in matters of infringement and validity of EU trade marks.

(32)  It  is  essential  that  decisions  regarding  the  validity  and  infringement  of 
EU trade marks have effect and cover the entire area of the Union, as this is 
the only way of preventing inconsistent decisions on the part of the courts and 
the Office and of ensuring that the unitary character of EU trade marks is not 
undermined. The provisions of Regulation (EU) No 1215/2012 of the European 
Parliament and of the Council (9) should apply to all actions at law relating to 
EU trade marks, save where this Regulation derogates from those rules.

(9)  Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 
on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters 
(OJ L 351, 20.12.2012, p. 1).

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

(33)  Contradictory judgments should be avoided in actions which involve the 
same  acts  and  the  same  parties  and  which  are  brought  on  the  basis  of  an 
EU trade mark and parallel national trade marks. For this purpose, when the 
actions are brought in the same Member State, the way in which this is to be 
achieved  is  a  matter  for  national  procedural  rules,  which  are  not  prejudiced 
by  this  Regulation,  whilst  when  the  actions  are  brought  in  different  Member 
States, provisions modelled on the rules on lis pendens and related actions of 
Regulation (EU) No 1215/2012 appear appropriate.

(34) With  the  aim  of  promoting  convergence  of  practices  and  of  developing 
common tools, it is necessary to establish an appropriate framework for coop-
eration between the Office and the industrial property offices of the Member 
States, including the Benelux Office for Intellectual Property, defining key areas 
of cooperation and enabling the Office to coordinate relevant common projects 
of interest to the Union and the Member States and to finance, up to a maxi-
mum amount, those projects. 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 projects, particularly the databases for 
search and consultation purposes, should provide additional, inclusive, efficient 
tools that are free of charge to comply with the specific requirements arising 
from the unitary character of the EU trade mark.

(35)  It is desirable to facilitate friendly, expeditious and efficient dispute reso-
lution by entrusting the Office with the establishment of a mediation centre 
the services of which could be used by any person with the aim of achieving 
a friendly settlement of disputes relating to EU trade marks and Community 
designs by mutual agreement.

(36) The  setting  up  of  the  EU  trade  mark  system  has  resulted  in  increased 
financial burdens for the central industrial property offices and other authori-
ties of the Member States. The additional costs are related to the handling of 
a  higher  number  of  opposition  and  invalidity  proceedings  involving  EU  trade 
marks or brought by proprietors of such trade marks; to the awareness-raising 
activities linked to the EU trade mark system; as well as to activities intended 
to ensure the enforcement of EU trade mark rights. It is, therefore, appropriate 
to ensure that the Office offset part of the costs incurred by Member States 
for the role they play in ensuring the smooth functioning of the EU trade mark 
system. The payment of such offsetting should be subject to the submission, 
by Member States, of relevant statistical data. The offsetting of costs should 
not be of such an extent that it would cause a budgetary deficit for the Office.

(37) In order to guarantee the full autonomy and independence of the Office, 
it is considered necessary to grant it an  autonomous budget whose revenue 
comes  principally  from  fees  paid  by  the  users  of  the  system.  However,  the 

The EUTM Regulation

23

Union budgetary procedure remains applicable as far as any subsidies charge-
able to the general budget of the Union are concerned. Moreover, the auditing 
of accounts should be undertaken by the Court of Auditors.

(38) In the interest of sound financial management, the accumulation by the 
Office  of  significant  budgetary  surpluses  should  be  avoided.  This  should  be 
without  prejudice  to  the  Office  maintaining  a  financial  reserve  covering  one 
year of its operational expenditure to ensure the continuity of its operations 
and the performance of its tasks. That reserve should only be used to ensure 
the continuity of the tasks of the Office as specified in this Regulation.

(39)  Given  the  essential  importance  of  the  amounts  of  fees  payable  to  the 
Office for the functioning of the EU trade mark system and its complemen-
tary  relationship  as  regards  national  trade  mark  systems,  it  is  necessary  to 
set those fee amounts directly in this Regulation in the form of an annex. The 
amounts of the fees should be fixed at a level which ensures that: first, the 
revenue they produce is in principle sufficient for the budget of the Office to be 
balanced; second, there is coexistence and complementarity between the EU 
trade mark and the national trade mark systems, also taking into account the 
size of the market covered by the EU trade mark and the needs of small and 
medium-sized enterprises; and third, the rights of proprietors of an EU trade 
mark are enforced efficiently in the Member States.

(40)  In  order  to  ensure  an  effective,  efficient  and  expeditious  examination 
and registration of EU trade mark applications by the Office using procedures 
which are transparent, thorough, fair and equitable, the power to adopt acts in 
accordance with Article 290 of the Treaty on the Functioning of the European 
Union (TFEU) should be delegated to the Commission in respect of specifying 
the details on the procedures for filing and examining an opposition and on the 
procedures governing the amendment of the application.

(41)  In order to ensure that an EU trade mark can be revoked or declared inva-
lid in an effective and efficient way by means of transparent, thorough, fair 
and equitable procedures, the power to adopt acts in accordance with Article 
290 TFEU should be delegated to the Commission in respect of specifying the 
procedures for revocation and declaration of invalidity.

(42)  In order to allow for an effective, efficient and complete review of deci-
sions of the Office by the Boards of Appeal by means of a transparent, thor-
ough, fair and equitable procedure which takes into account the principles laid 
down  in  this  Regulation,  the  power  to  adopt  acts  in  accordance  with  Article 
290 TFEU should be delegated to the Commission in respect of specifying the 
formal content of the notice of appeal, the procedure for the filing and exami-

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

nation of an appeal, the formal content and form of the Board of Appeal’s deci-
sions, and the reimbursement of the appeal fees.

(43)  In order to ensure a smooth, effective and efficient operation of the EU 
trade  mark  system,  the  power  to  adopt  acts  in  accordance  with  Article  290 
TFEU  should  be  delegated  to  the  Commission  in  respect  of  specifying  the 
requirements as to the details on oral proceedings and the detailed arrange-
ments for taking of evidence, the detailed arrangements for notification, the 
means of communication and the forms to be used by the parties to proceed-
ings, the rules governing the calculation and duration of time limits, the pro-
cedures for the revocation of a decision or for cancellation of an entry in the 
Register, the detailed arrangements for the resumption of proceedings, and the 
details on representation before the Office.

(44) In order to ensure an effective and efficient organisation of the Boards of 
Appeal, the power to adopt acts in accordance with Article 290 TFEU should be 
delegated to the Commission in respect of specifying the details on the organi-
sation of the Boards of Appeal.

(45)  In order to ensure the effective and efficient registration of international 
trade marks in a manner that is fully consistent with the rules of the Protocol 
relating to the Madrid Agreement concerning the international registration of 
marks, adopted at Madrid on 27 June 1989 (‘Madrid Protocol’), the power to 
adopt  acts  in  accordance  with  Article  290  TFEU  should  be  delegated  to  the 
Commission in respect of specifying the details on the procedures concerning 
the filing and examination of an opposition, including the necessary communi-
cations to be made to the World Intellectual Property Organisation (WIPO), and 
the  details  of  the  procedure  concerning  international  registrations  based  on 
a basic application or basic registration relating to a collective mark, certifica-
tion mark or guarantee mark.

(46)  It  is  of  particular  importance  that  the  Commission  carry  out  appropriate 
consultations during its preparatory work, including at expert level, and that those 
consultations  be  conducted  in  accordance  with  the  principles  laid  down  in  the 
Interinstitutional Agreement of 13 April 2016 on Better Law-Making (10). In par-
ticular,  to  ensure  equal  participation  in  the  preparation  of  delegated  acts,  the 
European Parliament and the Council receive all documents at the same time as 
Member States’ experts, and their experts systematically have access to meet-
ings of Commission expert groups dealing with the preparation of delegated acts.

(47)  In order to ensure uniform conditions for the implementation of this Regu-
lation, implementing powers should be conferred on the Commission in respect 

(10) OJ L 123, 12.5.2016, p. 1.

The EUTM Regulation

25

of  specifying  the  details  concerning  applications,  requests,  certificates,  claims, 
regulations, notifications and any other document under the relevant procedural 
requirements established by this Regulation, as well as in respect of maximum 
rates for costs essential to the proceedings and actually incurred, details concern-
ing publications in the European Union Trade Marks Bulletin and the Official Jour-
nal of the Office, the detailed arrangements for exchange of information between 
the  Office  and  national  authorities,  detailed  arrangements  concerning  transla-
tions of supporting documents in written proceedings, exact types of decisions to 
be taken by a single member of the opposition or cancellation divisions, details of 
the notification obligation pursuant to the Madrid Protocol, and detailed require-
ments regarding the request for territorial extension subsequent to international 
registration. Those powers should be exercised in accordance with Regulation (EU) 
No 182/2011 of the European Parliament and of the Council (11).

(48)  Since the objectives of this Regulation cannot be sufficiently achieved by 
the Member States but can rather, by reason of its scale and effects, be better 
achieved at Union level, the Union may adopt measures, in accordance with the 
principle of subsidiarity as set out in Article 5 of the Treaty on European Union. 
In  accordance  with  the  principle  of  proportionality  as  set  out  in  that  Article, 
this Regulation does not go beyond what is necessary in order to achieve those 
objectives,

HAVE ADOPTED THIS REGULATION:

CHAPTER I 
GENERAL PROVISIONS

Article 1
EU trade mark

1.  A trade mark for goods or services which is registered in accordance with 
the conditions contained in this Regulation and in the manner herein provided 
is hereinafter referred to as a ‘European Union trade mark (“EU trade mark”)’.

2.  An EU trade mark shall have a unitary character. It shall have equal effect 
throughout the Union: it shall not be registered, transferred or surrendered or 
be the subject of a decision revoking the rights of the proprietor or declaring it 

EUTMR 
Art. 9, 20, 
21, 51, 57, 
64, 137, 
138

(11) Regulation (EU) No 182/2011 of the European Parliament and of the Council of 16 February 2011 
laying  down  the  rules  and  general  principles  concerning  mechanisms  for  control  by  the  Member 
States of the Commission’s exercise of implementing powers (OJ L 55, 28.2.2011, p. 13).

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

invalid, nor shall its use be prohibited, save in respect of the whole Union. This 
principle shall apply unless otherwise provided for in this Regulation.

Article 2
Office

EUTMR 
Art. 142-
144

1.  A European Union Intellectual Property Office (‘the Office’) is established.

2.  All references in Union law to the Office for Harmonization in the Internal 
Market (Trade Marks and Designs) shall be read as references to the Office.

Article 3
Capacity to act

EUTMR 
Art. 5 
EUTMIR 
Art. 2 

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

CHAPTER II 
THE LAW RELATING TO TRADE MARKS

SECTION 1 
Definition of an EU trade mark and obtaining an EU trade 
mark

Article 4
Signs of which an EU trade mark may consist

EUTMR 
Art. 7, 111 
EUTMIR 
Art. 3 

An EU trade mark may consist of any signs, in particular words, including per-
sonal names, or designs, letters, numerals, colours, the shape of goods or of the 
packaging of goods, or sounds, provided that such signs are capable of:

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

(b)  being  represented  on  the  Register  of  European  Union  trade  marks  (‘the 
Register’), in a manner which enables the competent authorities and the public 
to determine the clear and precise subject matter of the protection afforded to 
its proprietor.

The EUTM Regulation

27

Article 5
Persons who can be proprietors of EU trade marks

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

EUTMR 
Art. 31, 74

EUTMR 
Art. 51

EUTMR 
Art. 42, 
59, 74, 83, 
111, 128, 
193 
EUTMIR 
Art. 7 

Article 6
Means whereby an EU trade mark is obtained

An EU trade mark shall be obtained by registration.

Article 7
Absolute grounds for refusal

1. 

The following shall not be registered:

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

(b) 

trade marks which are devoid of any distinctive character;

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

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

(e)  signs which consist exclusively of:

(i)  the shape, or another characteristic, which results from the nature of 

the goods themselves;

(ii)  the  shape,  or  another  characteristic,  of  goods  which  is  necessary  to 

obtain a technical result;

(iii) the shape, or another characteristic, which gives substantial value to 

the goods;

trade marks which are contrary to public policy or to accepted principles 

(f) 
of morality;

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

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

(h) 
trade marks which have not been authorised by the competent authorities 
and are to be refused pursuant to Article 6ter of the Paris Convention for the 
Protection of Industrial Property (‘Paris Convention’);

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

(j) 
trade marks which are excluded from registration, pursuant to Union leg-
islation or national law or to international agreements to which the Union or 
the Member State concerned is party, providing for protection of designations 
of origin and geographical indications;

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

(l) 
trade marks which are excluded from registration pursuant to Union leg-
islation or international agreements to which the Union is party, providing for 
protection of traditional specialities guaranteed;

(m)  trade marks which consist of, or reproduce in their essential elements, an 
earlier plant variety denomination registered in accordance with Union legis-
lation or national law, or international agreements to which the Union or the 
Member  State  concerned  is  a  party,  providing  for  protection  of  plant  variety 
rights, and which are in respect of plant varieties of the same or closely related 
species.

Paragraph 1 shall apply notwithstanding that the grounds of non-regis-

2. 
trability obtain in only part of the Union.

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

The EUTM Regulation

29

Article 8
Relative grounds for refusal

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

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

EUTMR 
Art. 46, 60, 
128, 196, 
198 
EUTMDR 
Art. 2-8

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

2. 

For the purposes of paragraph 1, ‘earlier trade mark’ means:

(a) 
trade marks of the following kinds with a date of application for registra-
tion which is earlier than the date of application for registration of the EU trade 
mark, taking account, where appropriate, of the priorities claimed in respect of 
those trade marks:

(i)  EU trade marks;

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

(iii) trade marks registered under international arrangements which have 

effect in a Member State;

(iv) trade marks registered under international arrangements which have 

effect in the Union;

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

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

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

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

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

(a) 
rights to that sign were acquired prior to the date of application for regis-
tration of the EU trade mark, or the date of the priority claimed for the applica-
tion for registration of the EU trade mark;

that sign confers on its proprietor the right to prohibit the use of a subse-

(b) 
quent trade mark.

5.  Upon opposition by the proprietor of a registered earlier 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 
to or not similar to those for which the earlier trade mark is registered, where, 
in  the  case  of  an  earlier  EU  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 det-
rimental to, the distinctive character or the repute of the earlier trade mark.

6.  Upon opposition by any person authorised under the relevant law to exer-
cise the rights arising from a designation of origin or a geographical indication, 
the trade mark applied for shall not be registered where and to the extent that, 
pursuant to the Union legislation or national law providing for the protection of 
designations of origin or geographical indications:

(i)  an application for a designation of origin or a geographical indication 
had already been submitted, in accordance with Union legislation or 
national law, prior to the date of application for registration of the EU 
trade mark or the date of the priority claimed for the application, sub-
ject to its subsequent registration;

(ii)  that designation of origin or geographical indication confers the right 

to prohibit the use of a subsequent trade mark.

The EUTM Regulation

31

EUTMR 
Art. 17, 
124, 129, 
130

SECTION 2 
Effects of an EU trade mark

Article 9
Rights conferred by an EU trade mark

The registration of an EU trade mark shall confer on the proprietor exclu-

1. 
sive rights therein.

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

the  sign  is  identical  with  the  EU  trade  mark  and  is  used  in  relation  to 
(a) 
goods or services which are identical with those for which the EU trade mark is 
registered;

the sign is identical with, or similar to, the EU trade mark and is used in 
(b) 
relation to goods or services which are identical with, or similar to, the goods 
or services for which the EU 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;

(c) 
the sign is identical with, or similar to, the EU trade mark irrespective of 
whether it is used in relation to goods or services which are identical with, simi-
lar to or not similar to those for which the EU 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 EU trade mark.

3. 

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

(a)  affixing the sign to the goods or to the packaging of those goods;

(b)  offering  the  goods,  putting  them  on  the  market,  or  stocking  them  for 
those purposes under the sign, or offering or supplying services thereunder;

(c) 

importing or exporting the goods under the sign;

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

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

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

(f)  using the sign in comparative advertising in a manner that is contrary to 
Directive 2006/114/EC.

4.  Without  prejudice  to  the  rights  of  proprietors  acquired  before  the  filing 
date or the priority date of the EU trade mark, the proprietor of that EU trade 
mark shall also be entitled to prevent all third parties from bringing goods, in 
the course of trade, into the Union without being released for free circulation 
there, where such goods, including packaging, come from third countries and 
bear without authorisation a trade mark which is identical with the EU trade 
mark registered in respect of such goods, or which cannot be distinguished in 
its essential aspects from that trade mark.

The  entitlement  of  the  proprietor  of  an  EU  trade  mark  pursuant  to  the  first 
subparagraph shall lapse if, during the proceedings to determine whether the 
EU trade mark has been infringed, initiated in accordance with Regulation (EU) 
No 608/2013, evidence is provided by the declarant or the holder of the goods 
that the proprietor of the EU trade mark is not entitled to prohibit the placing of 
the goods on the market in the country of final destination.

Article 10
Right to prohibit preparatory acts in relation to the use of packaging or 
other means

Where the risk exists that the packaging, labels, tags, security or authenticity 
features or devices or any other means to which the mark is affixed could be 
used in relation to goods or services and such use would constitute an infringe-
ment of the rights of the proprietor of an EU trade mark under Article 9(2) and 
(3), the proprietor of that trade mark shall have the right to prohibit the follow-
ing acts if carried out in the course of trade:

(a)  affixing a sign identical with, or similar to, the EU trade mark on packag-
ing, labels, tags, security or authenticity features or devices or any other means 
to which the mark may be affixed;

(b)  offering  or  placing  on  the  market,  or  stocking  for  those  purposes,  or 
importing  or  exporting,  packaging,  labels,  tags,  security  or  authenticity  fea-
tures or devices or any other means to which the mark is affixed.

The EUTM Regulation

33

Article 11
Date from which rights against third parties prevail

The rights conferred by an EU trade mark shall prevail against third par-

1. 
ties from the date of publication of the registration of the trade mark.

EUTMR 
Art. 9, 44, 
124, 125

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

3.  A court seised of a case shall not decide upon the merits of that case until 
the registration has been published.

Article 12
Reproduction of an EU trade mark in a dictionary

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

Article 13
Prohibition of the use of an EU trade mark registered in the name of an 
agent or representative

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

Article 14
Limitation of the effects of an EU trade mark

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

EUTMR 
Art. 9

the name or address of the third party, where that third party is a natural 

(a) 
person;

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

(b)  signs  or  indications  which  are  not  distinctive  or  which  concern  the  kind, 
quality, quantity, intended purpose, value, geographical origin, the time of pro-
duction of goods or of rendering of the service, or other characteristics of the 
goods or services;

(c) 
the EU trade mark for the purpose of identifying or referring to goods or 
services as those of the proprietor of that trade mark, in particular, where the 
use of that trade mark is necessary to indicate the intended purpose of a prod-
uct or service, in particular as accessories or spare parts.

Paragraph 1 shall only apply where the use made by the third party is in 

2. 
accordance with honest practices in industrial or commercial matters.

Article 15
Exhaustion of the rights conferred by an EU trade mark

EUTMR 
Art. 9

1.  An EU trade mark shall not entitle the proprietor to prohibit its use in rela-
tion to goods which have been put on the market in the European Economic 
Area under that trade mark by the proprietor or with his consent.

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

Article 16
Intervening right of the proprietor of a later registered trade mark as 
a defence in infringement proceedings

EUTMR 
Art. 9

1. 
In infringement proceedings, the proprietor of an EU trade mark shall not 
be entitled to prohibit the use of a later registered EU trade mark where that 
later trade mark would not be declared invalid pursuant to Article 60(1), (3) or 
(4), Article 61(1) or (2), or Article 64(2) of this Regulation.

2. 
In infringement proceedings, the proprietor of an EU trade mark shall not 
be entitled to prohibit the use of a later registered national trade mark where 
that later registered national trade mark would not be declared invalid pursu-
ant to Article 8 or Article 9(1) or (2), or Article 46(3) of Directive (EU) 2015/2436 
of the European Parliament and of the Council (12).

(12) Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to 
approximate the laws of the Member States relating to trade marks (OJ L 336, 23.12.2015, p. 1).

The EUTM Regulation

35

3.  Where the proprietor of an EU trade mark is not entitled to prohibit the use 
of a later registered trade mark pursuant to paragraph 1 or 2, the proprietor of 
that later registered trade mark shall not be entitled to prohibit the use of that 
earlier EU trade mark in infringement proceedings.

Article 17
Complementary application of national law relating to infringement

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

EUTMR 
Art. 9, 
80, 90, 
129-131

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

The rules of procedure to be applied shall be determined in accordance 

3. 
with the provisions of Chapter X.

SECTION 3 
Use of an EU trade mark

Article 18
Use of an EU trade mark

1. 
If, within a period of five years following registration, the proprietor has 
not put the EU trade mark to genuine use in the Union in connection with the 
goods or services in respect of which it is registered, or if such use has been 
suspended during an uninterrupted period of five years, the EU trade mark shall 
be  subject  to  the  sanctions  provided  for  in  this  Regulation,  unless  there  are 
proper reasons for non-use.

EUTMR 
Art. 47, 58, 
64, 78, 87, 
139 
EUTMDR 
Art. 10, 19

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

(a)  use of the EU 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 regis-
tered in the name of the proprietor;

(b)  affixing of the EU trade mark to goods or to the packaging thereof in the 
Union solely for export purposes.

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

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

SECTION 4 
EU trade marks as objects of property

Article 19
Dealing with EU trade marks as national trade marks

EUTMR 
Art. 111

1.  Unless Articles 20 to 28 provide otherwise, an EU 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:

(a) 

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

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

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

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

Article 20
Transfer

EUTMR 
Art. 1, 5, 
28, 74, 83, 
89, 111, 
199 
EUTMIR 
Art. 13, 14 

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

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

The EUTM Regulation

37

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

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

5.  An  application  for  registration  of  a  transfer  shall  contain  information 
to identify the EU trade mark, the new proprietor, the goods and services to 
which the transfer relates, as well as documents duly establishing the trans-
fer in accordance with paragraphs 2 and 3. The application may further con-
tain,  where  applicable,  information  to  identify  the  representative  of  the  new 
proprietor.

6. 

The Commission shall adopt implementing acts specifying:

(a) 

the details to be contained in the application for registration of a transfer;

(b) 
the kind of documentation required to establish a transfer, taking account 
of the agreements given by the registered proprietor and the successor in title;

(c) 
the details of how to process applications for partial transfers, ensuring 
that the goods and services in the remaining registration and the new registra-
tion do not overlap and that a separate file, including a new registration num-
ber, is established for the new registration.

Those implementing acts shall be adopted in accordance with the examination 
procedure referred to in Article 207(2).

7.  Where the conditions applicable to the registration of a transfer, as laid 
down in paragraphs 1, 2 and 3, or in the implementing acts referred to in para-
graph 6, are not fulfilled, the Office shall notify the applicant of the deficien-
cies. If the deficiencies are not remedied within a period to be specified by the 
Office, it shall reject the application for registration of the transfer.

8.  A single application for registration of a transfer may be submitted for two 
or more trade marks, provided that the registered proprietor and the successor 
in title are the same in each case.

9. 

Paragraphs 5 to 8 shall also apply to applications for EU trade marks.

10.  In  the  case  of  a  partial  transfer,  any  application  made  by  the  original 
proprietor pending with regard to the original registration shall be deemed to 
be pending with regard to the remaining registration and the new registration. 

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

Where such application is subject to the payment of fees and those fees have 
been paid by the original proprietor, the new proprietor shall not be liable to pay 
any additional fees with regard to such application.

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

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

13.  All documents which require notification to the proprietor of the EU trade 
mark in accordance with Article 98 shall be addressed to the person registered 
as proprietor.

Article 21
Transfer of a trade mark registered in the name of an agent

EUTMR 
Art. 8, 13, 
60

1.  Where an EU trade mark is registered in the name of the agent or repre-
sentative of a person who is the proprietor of that trade mark, without the pro-
prietor’s authorisation, the latter shall be entitled to demand the assignment 
of the EU trade mark in his favour, unless such agent or representative justifies 
his action.

The  proprietor  may  submit  a  request  for  assignment  pursuant  to  para-

2. 
graph 1 of this Article to the following:

the Office, pursuant to Article 60(1)(b), instead of an application for a dec-

(a) 
laration of invalidity;

(b)  a European Union trade mark court (‘EU trade mark court’) as referred to 
in Article 123, instead of a counterclaim for a declaration of invalidity based on 
Article 128(1).

Article 22
Rights in rem

EUTMR 
Art. 26, 
111, 200

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

2.  At the 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.

The EUTM Regulation

39

3.  An entry in the Register effected pursuant to paragraph 2 shall be can-
celled or modified at the request of one of the parties.

Article 23
Levy of execution

1.  An EU trade mark may be levied in execution.

2.  As regards the procedure for levy of execution in respect of an EU trade 
mark, the courts and authorities of the Member States determined in accord-
ance with Article 19 shall have exclusive jurisdiction.

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

4.  An entry in the Register effected pursuant to paragraph 3 shall be can-
celled or modified at the request of one of the parties.

Article 24
Insolvency proceedings

EUTMR 
Art. 26, 
111, 200

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

EUTMR 
Art. 26, 
111, 200

However, where the debtor is an insurance undertaking or a credit institution as 
defined in Directive 2009/138/EC of the European Parliament and of the Coun-
cil (13) and Directive 2001/24/EC of the European Parliament and of the Council 
(14),  respectively,  the  only  insolvency  proceedings  in  which  an  EU  trade  mark 
may be involved are those opened in the Member State where that undertaking 
or institution has been authorised.

In the case of joint proprietorship of an EU trade mark, paragraph 1 shall 

2. 
apply to the share of the joint proprietor.

3.  Where an EU trade mark is involved in insolvency proceedings, on request 
of the competent national authority an entry to this effect shall be made in the 

(13) Directive  2009/138/EC  of  the  European  Parliament  and  of  the  Council  of  25  November  2009  on 
the  taking-up  and  pursuit  of  the  business  of  Insurance  and  Reinsurance  (Solvency  II)  (OJ  L  335, 
17.12.2009, p. 1).

(14) Directive 2001/24/EC of the European Parliament and of the Council of 4 April 2001 on the reorgani-

sation and winding up of credit institutions (OJ L 125, 5.5.2001, p. 15).

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

Register and published in the European Union Trade Marks Bulletin referred to 
in Article 116.

Article 25
Licensing

EUTMR 
Art. 26, 
28, 29, 80, 
111, 200

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

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

(a) 

its duration;

(b) 

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

(c) 

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

(d) 

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

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

(e) 
licensee.

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

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

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

6.  An entry in the Register effected pursuant to paragraph 5 shall be can-
celled or modified at the request of one of the parties.

The EUTM Regulation

41

Article 26
Procedure for entering licences and other rights in the Register

1.  Article 20(5) and (6) and the rules adopted pursuant to it and Article 20(8) 
shall apply mutatis mutandis to the registration of a right in rem or transfer of 
a right in rem as referred to in Article 22(2), the levy of execution as referred 
to in Article 23(3), the involvement in insolvency proceedings as referred to in 
Article 24(3), as well as to the registration of a licence or transfer of a licence 
as referred to in Article 25(5), subject to the following:

EUTMR 
Art. 111 
EUTMIR 
Art. 13 

the  requirement  relating  to  the  identification  of  goods  and  services  to 
(a) 
which the transfer relates shall not apply in respect of a request for registration 
of a right in rem, of a levy of execution or of insolvency proceedings;

the requirement relating to the documents proving the transfer shall not 

(b) 
apply where the request is made by the proprietor of the EU trade mark.

The  application  for  registration  of  the  rights  referred  to  in  paragraph  1 

2. 
shall not be deemed to have been filed until the required fee has been paid.

The  application  for  registration  of  a  licence  may  contain  a  request  to 

3. 
record a licence in the Register as one or more of the following:

(a)  an exclusive licence;

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

(c)  a licence limited to only part of the goods or services for which the mark 
is registered;

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

(e)  a temporary licence.

Where a request is made to record the licence as a licence listed in points (c), 
(d) and (e) of the first subparagraph, the application for registration of a licence 
shall indicate the goods and services, the part of the Union and the time period 
for which the licence is granted.

4.  Where the conditions applicable to registration, as laid down in Articles 
22 to 25, in paragraphs 1 and 3 of this Article and in the other applicable rules 
adopted  pursuant  to  this  Regulation,  are  not  fulfilled,  the  Office  shall  notify 

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

the applicant of the deficiency. If the deficiency is not corrected within a period 
specified by the Office, it shall reject the application for registration.

Paragraphs 1 and 3 shall apply mutatis mutandis to applications for EU 

5. 
trade marks.

Article 27
Effects vis-à-vis third parties

EUTMR 
Art. 24

1. 
Legal acts referred to in Articles 20, 22 and 25 concerning an EU trade 
mark shall have effects vis-à-vis third parties in all the Member States only 
after entry in the Register. Nevertheless, such an act, before it is so entered, 
shall have effect vis-à-vis third parties who have acquired rights in the trade 
mark after the date of that act but who knew of the act at the date on which 
the rights were acquired.

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

3. 
The effects vis-à-vis third parties of the legal acts referred to in Article 23 
shall be governed by the law of the Member State determined in accordance 
with Article 19.

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

Article 28
The application for an EU trade mark as an object of property

EUTMIR 
Art. 13, 14 

Articles 19 to 27 shall apply to applications for EU trade marks.

Article 29
Procedure for cancelling or modifying the entry in the Register of licences 
and other rights

EUTMR 
Art. 111

1.  A registration effected under Article 26(1) shall be cancelled or modified 
at the request of one of the persons concerned.

The EUTM Regulation

43

2. 
The application shall contain the registration number of the EU trade mark 
concerned and the particulars of the right for which registration is requested to 
be cancelled or modified.

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

4. 
The application shall be accompanied by documents showing that the reg-
istered right no longer exists or that the licensee or the holder of another right 
consents to the cancellation or modification of the registration.

5.  Where the requirements for cancellation or modification of the registra-
tion are not satisfied, the Office shall notify the applicant of the deficiency. If 
the deficiency is not corrected within a period to be specified by the Office, it 
shall reject the application for cancellation or modification of the registration.

Paragraphs 1 to 5 of this Article shall apply mutatis mutandis to entries 

6. 
made in the files pursuant to Article 26(5).

CHAPTER III 
APPLICATION FOR EU TRADE MARKS

SECTION 1 
Filing of applications and the conditions which govern them

Article 30
Filing of applications

1.  An application for an EU trade mark shall be filed at the Office.

2. 
The Office shall issue to the applicant, without delay, a receipt which shall 
include at least the file number, a representation, description or other identifi-
cation of the mark, the nature and the number of the documents and the date 
of their receipt. That receipt may be issued by electronic means.

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

EUTMR 
Art. 32, 33, 
41 
EUTMDR 
Art. 63 
EUTMIR 
Art. 2, 3 

Article 31
Conditions with which applications must comply

1.  An application for an EU trade mark shall contain:

(a)  a request for the registration of an EU trade mark;

(b) 

information identifying the applicant;

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

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

The application for an EU trade mark shall be subject to the payment of 
2. 
the application fee covering one class of goods or services and, where appropri-
ate, of one or more class fees for each class of goods and services exceeding 
the first class and, where applicable, the search fee.

3. 
In  addition  to  the  requirements  referred  to  in  paragraphs  1  and  2,  an 
application for an EU trade mark shall comply with the formal requirements 
laid down in this Regulation and in the implementing acts adopted pursuant to 
it. If those conditions provide for the trade mark to be represented electroni-
cally, the Executive Director may determine the formats and maximum size of 
such an electronic file.

4. 
The Commission shall adopt implementing acts specifying the details to 
be contained in the application. Those implementing acts shall be adopted in 
accordance with the examination procedure referred to in Article 207(2).

Article 32
Date of filing

EUTMR 
Art. 41 
EUTMDR 
Art. 63

The date of filing of an EU trade mark application shall be the date on which the 
documents containing the information specified in Article 31(1) are filed with 
the Office by the applicant, subject to payment of the application fee within 
one month of filing those documents.

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45

Article 33
Designation and classification of goods and services

1.  Goods and services in respect of which trade mark registration is applied 
for  shall  be  classified  in  conformity  with  the  system  of  classification  estab-
lished  by  the  Nice  Agreement  Concerning  the  International  Classification  of 
Goods and Services for the Purposes of the Registration of Marks of 15 June 
1957 (‘the Nice Classification’).

EUTMR 
Art. 31, 
193

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  preci-
sion to enable the competent authorities and economic operators, on that sole 
basis, to determine the extent of the protection sought.

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 
set out in this Article.

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

The use of general terms, including the general indications of the class 
5. 
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 compris-
ing a claim to goods or services which cannot be so understood.

6.  Where  the  applicant  requests  registration  for  more  than  one  class,  the 
applicant shall group the goods and services 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 shall present them in the 
order of the classes.

7.  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. 
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 EU trade marks applied for before 22 June 2012 which are 
registered 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 

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class,  provided  that  the  goods  or  services  so  designated  are  included  in  the 
alphabetical list for that class in the edition of the Nice Classification in force 
at the date of filing.

The declaration shall be filed at the Office by 24 September 2016, 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 Office shall take 
appropriate  measures  to  amend  the  Register  accordingly.  The  possibility  to 
make a declaration in accordance with the first subparagraph of this paragraph 
shall be without prejudice to the application of Article 18, Article 47(2), Article 
58(1)(a), and Article 64(2).

EU 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.

9.  Where the register is amended, the exclusive rights conferred by the EU 
trade mark under Article 9 shall not prevent a third party from continuing to 
use a trade mark in relation to goods or services where and to the extent that 
the use of the trade mark for those goods or services:

(a)  commenced before the register was amended; and

(b)  did not infringe the proprietor’s rights based on the literal meaning of the 
record of the goods and services in the register at that time.

In  addition,  the  amendment  of  the  list  of  goods  or  services  recorded  in  the 
register shall not give the proprietor of the EU trade mark the right to oppose 
or to apply for a declaration of invalidity of a later trade mark where and to 
the extent that:

(a) 
the later trade mark was either in use, or an application had been made to 
register the trade mark, for goods or services before the register was amended; 
and

the use of the trade mark in relation to those goods or services did not 
(b) 
infringe, or would not have infringed, the proprietor’s rights based on the literal 
meaning of the record of the goods and services in the register at that time.

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47

SECTION 2 
Priority

Article 34
Right of priority

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

EUTMR 
Art. 35 
EUTMIR 
Art. 4 

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

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

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

5. 
If the first filing has been made in a State which is not a party to the Paris 
Convention  or  to  the  Agreement  establishing  the  World  Trade  Organisation, 
paragraphs 1 to 4 shall apply only in so far as that State, according to pub-
lished findings, grants, on the basis of the first filing made at the Office and 
subject to conditions equivalent to those laid down in this Regulation, a right of 
priority having equivalent effect. The Executive Director shall, where necessary, 
request the Commission to consider enquiring as to whether a State within the 
meaning of the first sentence accords that reciprocal treatment. If the Com-
mission determines that reciprocal treatment in accordance with the first sen-
tence is accorded, it shall publish a communication to that effect in the Official 
Journal of the European Union.

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6. 
Paragraph 5 shall apply from the date of publication in the Official Journal 
of the European Union of the communication determining that reciprocal treat-
ment is accorded, unless the communication states an earlier date from which 
it is applicable. It shall cease to apply from the date of publication in the Official 
Journal of the European Union of a communication of the Commission to the 
effect that reciprocal treatment is no longer accorded, unless the communica-
tion states an earlier date from which it is applicable.

Communications as referred to in paragraphs 5 and 6 shall also be pub-

7. 
lished in the Official Journal of the Office.

Article 35
Claiming priority

EUTMIR 
Art. 4 

1. 
Priority claims shall be filed together with the EU trade mark application 
and shall include the date, number and country of the previous application. The 
documentation in support of priority claims shall be filed within three months 
of the filing date.

The  Commission  shall  adopt  implementing  acts  specifying  the  kind  of 
2. 
documentation to be filed for claiming the priority of a previous application in 
accordance with paragraph 1 of this Article. Those implementing acts shall be 
adopted  in  accordance  with  the  examination  procedure  referred  to  in  Article 
207(2).

3. 
The Executive Director may determine that the documentation to be pro-
vided by the applicant in support of the priority claim may consist of less than 
what  is  required  under  the  specifications  adopted  in  accordance  with  para-
graph 2, provided that the information required is available to the Office from 
other sources.

Article 36
Effect of priority right

EUTMR 
Art. 8, 46, 
60

The right of priority shall have the effect that the date of priority shall count as 
the date of filing of the EU trade mark application for the purposes of estab-
lishing which rights take precedence.

Article 37
Equivalence of Union filing with national filing

EUTMR 
Art. 31, 
32, 36, 41, 
139

An EU trade mark application which has been accorded a date of filing shall, in 
the Member States, be equivalent to a regular national filing, where appropri-
ate with the priority claimed for the EU trade mark application.

The EUTM Regulation

49

SECTION 3 
Exhibition priority

Article 38
Exhibition priority

1. 
If an applicant for an EU trade mark has displayed goods or services under 
the mark applied for, at an official or officially recognised international exhibi-
tion falling within the terms of the Convention relating to international exhibi-
tions signed at Paris on 22 November 1928 and last revised on 30 November 
1972, he may, if he files the application within a period of six months of the 
date of the first display of the goods or services under the mark applied for, 
claim a right of priority from that date within the meaning of Article 36. The 
priority claim shall be filed together with the EU trade mark application.

EUTMIR 
Art. 5 

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 
within three months of the filing date.

3.  An exhibition priority granted in a Member State or in a third country shall 
not extend the period of priority laid down in Article 34.

The Commission shall adopt implementing acts specifying the type and 
4. 
details of evidence to be filed for claiming an exhibition priority in accordance 
with paragraph 2 of this Article. Those implementing acts shall be adopted in 
accordance with the examination procedure referred to in Article 207(2).

SECTION 4 
Seniority of a national trade mark

Article 39
Claiming seniority of a national trade mark in an application for an EU 
trade mark or subsequent to the filing of the application

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

EUTMR 
Art. 40, 
139, 191 
EUTMIR 
Art. 6 

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2. 
Seniority  claims  shall  either  be  filed  together  with  the  EU  trade  mark 
application or within two months of the filing date of the application, and shall 
include the Member State or Member States in or for which the mark is regis-
tered, the number and the filing date of the relevant registration, and the goods 
and  services  for  which  the  mark  is  registered.  Where  the  seniority  of  one  or 
more registered earlier trade marks is claimed in the application, the documen-
tation in support of the seniority claim shall be filed within three months of the 
filing date. Where the applicant wishes to claim the seniority subsequent to the 
filing of the application, the documentation in support of the seniority claim 
shall be submitted to the Office within three months of receipt of the seniority 
claim.

3. 
Seniority shall have the sole effect under this Regulation that, where the 
proprietor of the EU trade mark surrenders the earlier trade mark or allows it 
to lapse, he shall be deemed to continue to have the same rights as he would 
have had if the earlier trade mark had continued to be registered.

4. 
The seniority claimed for the EU 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 that EU 
trade mark.

The Office shall inform the Benelux Office for Intellectual Property or the 
5. 
central industrial property office of the Member State concerned of the effec-
tive claiming of seniority.

6. 
The  Commission  shall  adopt  implementing  acts  specifying  the  kind  of 
documentation to be filed for claiming the seniority of a national trade mark 
or  a  trade  mark  registered  under  international  agreements  having  effect  in 
a Member State in accordance with paragraph 2 of this Article. Those imple-
menting acts shall be adopted in accordance with the examination procedure 
referred to in Article 207(2).

7. 
The Executive Director may determine that the documentation to be pro-
vided by the applicant in support of the seniority claim may consist of less than 
what  is  required  under  the  specifications  adopted  in  accordance  with  para-
graph 6, provided that the information required is available to the Office from 
other sources.

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51

Article 40
Claiming seniority of a national trade mark after registration of an EU 
trade mark

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

EUTMR 
Art. 192 
EUTMIR 
Art. 32 

2. 
Seniority claims filed pursuant to paragraph 1 of this Article shall include 
the  registration  number  of  the  EU  trade  mark,  the  name  and  address  of  its 
proprietor, the Member State or Member States in or for which the earlier mark 
is registered, the number and the filing date of the relevant registration, the 
goods and services for which  the mark  is  registered  and those  in respect  of 
which seniority is claimed, and supporting documentation as provided for in the 
rules adopted pursuant to Article 39(6).

3. 
If the requirements governing the claiming of seniority are not fulfilled, 
the Office shall communicate the deficiency to the proprietor of the EU trade 
mark. If the deficiency is not remedied within a period to be specified by the 
Office, the Office shall reject the claim.

4.  Article 39(3), (4), (5) and (7) shall apply.

CHAPTER IV 
REGISTRATION PROCEDURE

SECTION 1 
Examination of applications

Article 41
Examination of the conditions of filing

1. 

The Office shall examine whether:

the EU trade mark application satisfies the requirements for the accord-

(a) 
ance of a date of filing in accordance with Article 32;

EUTMR 
Art. 33-35, 
39, 99 
EUTMIR 
Art. 2-5 

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the EU trade mark application complies with the conditions and require-

(b) 
ments referred to in Article 31(3);

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

2.  Where the EU trade mark application does not satisfy the requirements 
referred to in paragraph 1, the Office shall request the applicant to remedy the 
deficiencies or the default on payment within two months of the receipt of the 
notification.

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

If  the  deficiencies  established  pursuant  to  paragraph  1(b)  are  not  rem-

4. 
edied within the prescribed period, the Office shall refuse the application.

5. 
If the default on payment established pursuant to paragraph 1(c) is not 
remedied within the prescribed period, the application shall be deemed to be 
withdrawn unless it is clear which categories of goods or services the amount 
paid is intended to cover. In the absence of other criteria to determine which 
classes  are  intended  to  be  covered,  the  Office  shall  take  the  classes  in  the 
order of the classification. The application shall be deemed to have been with-
drawn with regard to those classes for which the class fees have not been paid 
or have not been paid in full.

Failure to satisfy the requirements concerning the claim to priority shall 

6. 
result in loss of the right of priority for the application.

Failure to satisfy the requirements concerning the claiming of seniority of 

7. 
a national trade mark shall result in loss of that right for the application.

8.  Where  failure  to  satisfy  the  requirements  referred  to  in  paragraph  1(b) 
and (c) concerns only some of the goods or services, the Office shall refuse the 
application, or the right of priority or the right of seniority shall be lost, only in 
so far as those goods and services are concerned.

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53

Article 42
Examination as to absolute grounds for refusal

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

EUTMR 
Art. 193 
EUTMIR 
Art. 2, 7, 29 

2. 
The application shall not be refused before the applicant has been allowed 
the opportunity to withdraw or amend the application or to submit his obser-
vations. To this effect, the Office shall notify the applicant of the grounds for 
refusing registration and shall specify a period within which he may withdraw 
or amend the application or submit his observations. Where the applicant fails 
to overcome the grounds for refusing registration, the Office shall refuse reg-
istration in whole or in part.

SECTION 2 
Search

Article 43
Search report

1. 
The  Office  shall,  at  the  request  of  the  applicant  for  the  EU  trade  mark 
when filing the application, draw up a European Union search report (‘EU search 
report’) citing those earlier EU trade marks or EU trade mark applications dis-
covered which may be invoked under Article 8 against the registration of the EU 
trade mark applied for.

EUTMR 
Art. 195

2.  Where, at the time of filing an EU trade mark application, the applicant 
requests  that  a  search  report  be  prepared  by  the  central  industrial  property 
offices of the Member States and where the appropriate search fee has been 
paid  within  the  time  limit  for  the  payment  of  the  filing  fee,  the  Office  shall 
transmit without delay a copy of the EU trade mark application to the central 
industrial property office of each Member State which has informed the Office 
of its decision to operate a search in its own register of trade marks in respect 
of EU trade mark applications.

Each  of  the  central  industrial  property  offices  of  the  Member  States 
3. 
referred to in paragraph 2 shall communicate a search report which shall either 
cite any earlier national trade marks, national trade mark applications or trade 
marks registered under international agreements, having effect in the Member 
State or Member States concerned, which have been discovered and which may 
be invoked under Article 8 against the registration of the EU trade mark applied 
for, or state that the search has revealed no such rights.

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4. 
The Office, after consulting the Management Board provided for in Article 
153 (‘the Management Board’), shall establish the contents and modalities for 
the reports.

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

The Office shall transmit to the applicant for the EU trade mark the EU 

6. 
search report requested and any requested national search reports received.

7.  Upon publication of the EU trade mark application, the Office shall inform 
the  proprietors  of  any  earlier  EU  trade  marks  or  EU  trade  mark  applications 
cited in the EU search report of the publication of the EU trade mark applica-
tion. The latter shall apply irrespective of whether the applicant has requested 
to receive the EU search report, unless the proprietor of an earlier registration 
or application requests not to receive the notification.

SECTION 3 
Publication of the application

Article 44
Publication of the application

EUTMR 
Art. 41, 
111 
EUTMIR 
Art. 7, 19 

1. 
If the conditions which the application for an EU trade mark is required to 
satisfy have been fulfilled, the application shall be published for the purposes 
of Article 46 to the extent that it has not been refused pursuant to Article 42. 
The  publication  of  the  application  shall  be  without  prejudice  to  information 
already made available to the public otherwise in accordance with this Regula-
tion or acts adopted pursuant to this Regulation.

2.  Where, after publication, the application is refused pursuant to Article 42, 
the decision that it has been refused shall be published upon becoming final.

3.  Where the publication of the application contains an error attributable to 
the Office, the Office shall of its own motion or at the request of the applicant 
correct the error and publish the correction.

The rules adopted pursuant to Article 49(3) shall apply mutatis mutandis where 
a correction is requested by the applicant.

The EUTM Regulation

55

4.  Article  46(2)  shall  also  apply  where  the  correction  concerns  the  list  of 
goods or services or the representation of the mark.

5. 
The  Commission  shall  adopt  implementing  acts  laying  down  the  details 
to be contained in the publication of the application. Those implementing acts 
shall be adopted in accordance with the examination procedure referred to in 
Article 207(2).

SECTION 4 
Observations by third parties and opposition

Article 45
Observations by third parties

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

EUTMR 
Art. 44, 77, 
86, 193

Persons and groups or bodies as referred to in the first subparagraph shall not 
be parties to the proceedings before the Office.

Third party observations shall be submitted before the end of the oppo-
2. 
sition  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 Office to re-open the examination of absolute grounds on its 
own initiative at any time before registration, where appropriate.

The observations referred to in paragraph 1 shall be communicated to the 

4. 
applicant who may comment on them.

Article 46
Opposition

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

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

EUTMR 
Art. 104, 
105 
EUTMDR 
Art. 2-9, 
77

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

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

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

(d)  by the persons authorised under the relevant Union legislation or national 
law to exercise the rights referred to in Article 8(6).

2.  Notice of opposition to registration of the trade mark may also be given, 
subject to the conditions laid down in paragraph 1, in the event of the publi-
cation of an amended application in accordance with the second sentence of 
Article 49(2).

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

4.  Within a period to be fixed by the Office, the opponent may submit facts, 
evidence and arguments in support of his case.

Article 47
Examination of opposition

EUTMR 
Art. 18 
EUTMDR 
Art. 7-10

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

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

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

The EUTM Regulation

57

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

4. 
settlement.

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

The  decision  refusing  the  application  shall  be  published  upon  becoming 

6. 
final.

Article 48
Delegation of powers

The  Commission  is  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 208 specifying the details of the procedure for filing and examining an 
opposition set out in Articles 46 and 47.

SECTION 5 
Withdrawal, restriction, amendment and division of the 
application

Article 49
Withdrawal, restriction and amendment of the application

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

EUTMR 
Art. 44-46 
EUTMDR 
Art. 8, 11

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

3. 
The Commission is empowered to adopt delegated acts in accordance with 
Article 208 specifying the details of the procedure governing the amendment 
of the application.

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Article 50
Division of the application

EUTMR 
Art. 34, 39, 
47 
EUTMIR 
Art. 8 

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

2. 

The declaration of division shall not be admissible:

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

(b)  before the date of filing referred to in Article 32 has been accorded by the 
Office and during the opposition period provided for in Article 46(1).

The declaration of division shall be subject to a fee. The declaration shall 

3. 
be deemed not to have been made until the fee has been paid.

4.  Where the Office finds that the requirements laid down in paragraph 1 
and in the rules adopted pursuant to paragraph 9(a) are not fulfilled, it shall 
invite the applicant to remedy the deficiencies within a period to be specified 
by the Office. If the deficiencies are not remedied before the time limit expires, 
the Office shall refuse the declaration of division.

The division shall take effect on the date on which it is recorded in the files 

5. 
kept by the Office concerning the original application.

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

The  divisional  application  shall  preserve  the  filing  date  and  any  priority 

7. 
date and seniority date of the original application.

8.  Where  the  declaration  of  division  relates  to  an  application  which  has 
already been published pursuant to Article 44, the division shall be published. 

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59

The  divisional  application  shall  be  published.  The  publication  shall  not  open 
a new period for the filing of oppositions.

9. 

The Commission shall adopt implementing acts specifying:

the details to be contained in a declaration of the division of an applica-

(a) 
tion made pursuant to paragraph 1;

(b) 
the details as to how to process a declaration of the division of an appli-
cation,  ensuring  that  a  separate  file,  including  a  new  application  number,  is 
established for the divisional application;

the details to be contained in the publication of the divisional application 

(c) 
pursuant to paragraph 8.

Those implementing acts shall be adopted in accordance with the examination 
procedure referred to in Article 207(2).

SECTION 6 
Registration

Article 51
Registration

1.  Where an application meets the requirements set out in this Regulation 
and where no notice of opposition has been given within the period referred to 
in Article 46(1) or where any opposition entered has been finally disposed of by 
withdrawal, rejection or other disposition, the trade mark and the particulars 
referred to in Article 111(2) shall be recorded in the Register. The registration 
shall be published.

EUTMR 
Art. 41, 42, 
56, 
EUTMIR 
Art. 9, 11 

The  Office  shall  issue  a  certificate  of  registration.  That  certificate  may 
2. 
be issued by electronic means. The Office shall provide certified or uncertified 
copies of the certificate subject to the payment of a fee, where those copies are 
issued other than by electronic means.

The  Commission  shall  adopt  implementing  acts  specifying  the  details 
3. 
to be contained in and the form of the certificate of registration referred to 
in  paragraph  2  of  this  Article.  Those  implementing  acts  shall  be  adopted  in 
accordance with the examination procedure referred to in Article 207(2).

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CHAPTER V 
DURATION, RENEWAL, ALTERATION AND DIVISION 
OF EU TRADE MARKS

Article 52
Duration of registration

EU trade marks shall be registered for a period of 10 years from the date of fil-
ing of the application. Registration may be renewed in accordance with Article 
53 for further periods of 10 years.

Article 53
Renewal

EUTMR 
Art. 52

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

2. 
The Office shall inform the proprietor of the EU trade mark, and any per-
son having a registered right in respect of the EU trade mark, of the expiry of 
the registration at least six months before the said expiry. Failure to give such 
information shall not involve the responsibility of the Office and shall not affect 
the expiry of the registration.

3. 
The request for renewal shall be submitted in the six-month period prior to 
the expiry of the registration. The basic fee for the renewal and, where appro-
priate, one or more class fees for each class of goods or services exceeding the 
first one shall also be paid within this period. Failing this, the request may be 
submitted and the fees paid within a further period of six months following the 
expiry of registration, provided that an additional fee for late payment of the 
renewal fee or late submission of the request for renewal is paid within this 
further period.

4. 

The request for renewal shall include:

(a) 

the name of the person requesting renewal;

(b) 

the registration number of the EU trade mark to be renewed;

if the renewal is requested for only part of the registered goods and ser-
(c) 
vices,  an  indication  of  those  classes  or  those  goods  and  services  for  which 
renewal is requested, or those classes or those goods and services for which 

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61

renewal is not requested, grouped according to the classes of the Nice clas-
sification, each group being preceded by the number of the class of that clas-
sification to which that group of goods or services belongs, and presented in 
the order of classes of that classification.

If the payment referred to in paragraph 3 is made, it shall be deemed to con-
stitute a request for renewal provided that it contains all necessary indications 
to establish the purpose of the payment.

5.  Where the request is submitted or the fees paid in respect of only some 
of the goods or services for which the EU trade mark is registered, registration 
shall  be  renewed  for  those  goods  or  services  only.  Where  the  fees  paid  are 
insufficient to cover all the classes of goods and services for which renewal is 
requested, registration shall be renewed if it is clear which class or classes are 
to be covered. In the absence of other criteria, the Office shall take the classes 
into account in the order of classification.

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

7.  Where the request for renewal is filed within the periods provided for in 
paragraph  3,  but  the  other  conditions  governing  renewal  provided  for  in  this 
Article are not satisfied, the Office shall inform the applicant of the deficien-
cies found.

8.  Where a  request  for renewal is not submitted  or  is submitted  after the 
expiry of the period provided for in paragraph 3, or where the fees are not paid 
or are paid only after the period in question has expired, or where the deficien-
cies referred to in paragraph 7 are not remedied within that period, the Office 
shall determine that the registration has expired and shall notify the proprie-
tor  of  the  EU  trade  mark  accordingly.  Where  the  determination  has  become 
final, the Office shall cancel the mark from the register. The cancellation shall 
take effect from the day following the date on which the existing registration 
expired.  Where  the  renewal  fees  have  been  paid  but  the  registration  is  not 
renewed, those fees shall be refunded.

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

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Article 54
Alteration

EUTMIR 
Art. 10 

The EU trade mark shall not be altered in the Register during the period of 

1. 
registration or on renewal thereof.

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

The  request  for  alteration  shall  include  the  element  of  the  mark  to  be 

3. 
altered and that element in its altered version.

The Commission shall adopt implementing acts specifying the details to be con-
tained in the request for alteration. Those implementing acts shall be adopted 
in accordance with the examination procedure referred to in Article 207(2).

4. 
The request shall be deemed not to have been filed until the required fee 
has been paid. If the fee has not been paid or has not been paid in full, the 
Office shall inform the applicant accordingly. A single request may be made for 
the alteration of the same element in two or more registrations of the same 
proprietor. The required fee shall be paid in respect of each registration to be 
altered. If the requirements governing the alteration of the registration are not 
fulfilled, the Office shall communicate the deficiency to the applicant. If the 
deficiency  is  not  remedied  within  a  period  to  be  specified  by  the  Office,  the 
Office shall reject the request.

The publication of the registration of the alteration shall contain a rep-
5. 
resentation of the EU trade mark as altered. Third parties whose rights may 
be  affected  by  the  alteration  may  challenge  the  registration  thereof  within 
the period of three months following publication. Articles 46 and 47 and rules 
adopted pursuant to Article 48 shall apply to the publication of the registration 
of the alteration.

Article 55
Change of the name or address

EUTMR 
Art. 20 
EUTMIR 
Art. 12 

1.  A change of the name or address of the proprietor of the EU trade mark 
which is not an alteration of the EU trade mark pursuant to Article 54(2) and 
which  is  not  the  consequence  of  a  whole  or  partial  transfer  of  the  EU  trade 
mark shall, at the request of the proprietor, be recorded in the Register.

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63

The  Commission  shall  adopt  implementing  acts  specifying  the  details  to  be 
contained in a request for the change of name or address pursuant to the first 
subparagraph of this paragraph. Those implementing acts shall be adopted in 
accordance with the examination procedure referred to in Article 207(2).

2.  A single request may be made for the change of the name or address in 
respect of two or more registrations of the same proprietor.

3. 
If the requirements governing the recording of a change are not fulfilled, 
the Office shall communicate the deficiency to the proprietor of the EU trade 
mark. If the deficiency is not remedied within a period to be specified by the 
Office, the Office shall reject the request.

Paragraphs 1, 2 and 3 shall also apply to a change of the name or address 

4. 
of the registered representative.

5. 
Paragraphs  1  to  4  shall  apply  to  applications  for  EU  trade  marks.  The 
change shall be recorded in the files kept by the Office on the EU trade mark 
application.

Article 56
Division of the registration

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

EUTMR 
Art. 32, 50, 
51, 58, 111 
EUTMIR 
Art. 11 

2. 

The declaration of division shall not be admissible:

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

(b) 
if,  where  a  counterclaim  for  revocation  or  for  a  declaration  of  invalidity 
has been entered in a case before an EU trade mark court, such a divisional 
declaration has the effect of introducing a division amongst the goods or ser-
vices against which the counterclaim is directed, until the mention of the EU 

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

trade  mark  court’s  judgment  is  recorded  in  the  Register  pursuant  to  Article 
128(6).

3. 
If the requirements laid down in paragraph 1 and pursuant to the imple-
menting acts referred to in paragraph 8 are not fulfilled, or the list of goods 
and services which form the divisional registration overlap with the goods and 
services  which  remain  in  the  original  registration,  the  Office  shall  invite  the 
proprietor of the EU trade mark to remedy the deficiencies within such period 
as it may specify. If the deficiencies are not remedied before the period expires, 
the Office shall refuse the declaration of division.

The declaration of division shall be subject to a fee. The declaration shall 

4. 
be deemed not to have been made until the fee has been paid.

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

5. 
Register.

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

The divisional registration shall preserve the filing date and any priority 

7. 
date and seniority date of the original registration.

8. 

The Commission shall adopt implementing acts specifying:

the details to be contained in a declaration of the division of a registration 

(a) 
pursuant to paragraph 1;

the  details  as  how  to  process  a  declaration  of  the  division  of  a  regis-
(b) 
tration, ensuring that a separate file, including a new registration number, is 
established for the divisional registration.

Those implementing acts shall be adopted in accordance with the examination 
procedure referred to in Article 207(2).

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65

CHAPTER VI 
SURRENDER, REVOCATION AND INVALIDITY

SECTION 1 
Surrender 

Article 57
Surrender

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

2. 
The surrender shall be declared to the Office in writing by the proprietor 
of the trade mark. It shall not have effect until it has been entered in the Reg-
ister. The validity of the surrender of an EU trade mark which is declared to the 
Office subsequent to the submission of an application for revocation of that 
trade mark pursuant to Article 63(1) shall be conditional upon the final rejec-
tion or withdrawal of the application for revocation.

EUTMR 
Art. 1, 
22-25, 111, 
115 
EUTMDR 
Art. 17 
EUTMIR 
Art. 15 

3. 
Surrender shall be entered only with the agreement of the proprietor of 
a right relating to the EU trade mark and which is entered in the Register. If 
a licence has been registered, surrender shall be entered in the Register only if 
the proprietor of the EU trade mark proves that he has informed the licensee of 
his intention to surrender. The entry of the surrender shall be made on expiry 
of the three-month period after the date on which the proprietor satisfies the 
Office that he has informed the licensee of his intention to surrender, or before 
the expiry of that period, as soon as he proves that the licensee has given his 
consent.

4. 
If the requirements governing surrender are not fulfilled, the Office shall 
communicate the deficiencies to the declarant. If the deficiencies are not rem-
edied within a period to be specified by the Office, the Office shall reject the 
entry of surrender in the Register.

5. 
The Commission shall adopt implementing acts specifying the details to 
be contained in a declaration of surrender pursuant to paragraph 2 of this Arti-
cle and the kind of documentation required to establish a third party’s agree-
ment pursuant to paragraph 3 of this Article. Those implementing acts shall 
be adopted in accordance with the examination procedure referred to in Article 
207(2).

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SECTION 2 
Grounds for revocation

Article 58
Grounds for revocation

EUTMR 
Art. 1, 7, 
18, 81, 91, 
127, 128

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

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

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

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

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

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67

SECTION 3 
Grounds for invalidity

Article 59
Absolute grounds for invalidity

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

(a)  where the EU trade mark has been registered contrary to the provisions of 
Article 7;

EUTMR 
Art. 1, 82, 
92, 127, 
128

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

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

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

Article 60
Relative grounds for invalidity

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

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

EUTMR 
Art. 1, 82, 
92, 127, 
128, 137

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

(c)  where there is an earlier right as referred to in Article 8(4) and the condi-
tions set out in that paragraph are fulfilled;

(d)  where there is an earlier designation of origin or geographical indication 
as referred to in Article 8(6) and the conditions set out in that paragraph are 
fulfilled.

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

All the conditions referred to in the first subparagraph shall be fulfilled at the 
filing date or the priority date of the EU trade mark.

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

(a)  a right to a name;

(b)  a right of personal portrayal;

(c)  a copyright;

(d)  an industrial property right.

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

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

5.  Article 59(3) shall apply.

Article 61
Limitation in consequence of acquiescence

EUTMR 
Art. 18, 60, 
137

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

2.  Where the proprietor of an earlier national trade mark as referred to in 
Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, 
for a period of five successive years, in the use of a later EU trade mark in the 
Member State in which the earlier trade mark or the other earlier sign is pro-

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69

tected while being aware of such use, he shall no longer be entitled on the basis 
of the earlier trade mark or of the other earlier sign to apply for a declaration 
that the later trade mark is invalid in respect of the goods or services for which 
the later trade mark has been used, unless registration of the later EU trade 
mark was applied for in bad faith.

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

SECTION 4 
Consequences of revocation and invalidity

Article 62
Consequences of revocation and invalidity

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

EUTMR 
Art. 25, 
127, 128

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

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

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

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

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

SECTION 5 
Proceedings in the office in relation to revocation or invalidity

Article 63
Application for revocation or for a declaration of invalidity

EUTMR 
Art. 128, 
132 
EUTMDR 
Art. 12-20

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

(a)  where Articles 58 and 59 apply, by any natural or legal person and any 
group or body set up for the purpose of representing the interests of manufac-
turers, producers, suppliers of services, traders or consumers, which, under the 
terms of the law governing it, has the capacity in its own name to sue and be 
sued;

(b)  where Article 60(1) applies, by the persons referred to in Article 46(1);

(c)  where Article 60(2) applies, by the owners of the earlier rights referred to 
in that provision or by the persons who are entitled under Union legislation or 
the law of the Member State concerned to exercise the rights in question.

The application shall be filed in a written reasoned statement. It shall not 

2. 
be deemed to have been filed until the fee has been paid.

3.  An  application  for  revocation  or  for  a  declaration  of  invalidity  shall  be 
inadmissible  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 Office or by an EU trade mark court as referred to in Arti-
cle 123, and the decision of the Office or that court on that application has 
acquired the authority of a final decision.

Article 64
Examination of the application

EUTMR 
Art. 18, 
198 
EUTMDR 
Art. 13-19

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

If the proprietor of the EU trade mark so requests, the proprietor of an 
2. 
earlier EU trade mark, being a party to the invalidity proceedings, shall furnish 
proof that, during the period of five years preceding the date of the applica-

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71

tion for a declaration of invalidity, the earlier EU trade mark has been put to 
genuine use in the Union in connection with the goods or services in respect of 
which it is registered and which the proprietor of that earlier trade mark cites 
as justification for his application, or that there are proper reasons for non-use, 
provided that the earlier EU trade mark has at that date been registered for 
not less than five years. If, at the date on which the EU trade mark application 
was filed or at the priority date of the EU trade mark application, the earlier 
EU trade mark had been registered for not less than five years, the proprietor 
of the earlier EU trade mark shall furnish proof that, in addition, the conditions 
set out in Article 47(2) were satisfied at that date. In the absence of proof to 
this effect, the application for a declaration of invalidity shall be rejected. If 
the earlier EU trade mark has been used only in relation to part of the goods or 
services for which it is registered, it shall, for the purpose of the examination 
of the application for a declaration of invalidity, be deemed to be registered in 
respect of that part of the goods or services only.

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

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

4. 
settlement.

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

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

Article 65
Delegation of powers

The  Commission  is  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 208 specifying the details of the procedures governing the revocation 
and declaration of invalidity of an EU trade mark as referred to in Articles 63 
and 64, as well as the transfer of an EU trade mark registered in the name of 
an agent as referred to in Article 21.

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

CHAPTER VII 
APPEALS

Article 66
Decisions subject to appeal

EUTMR 
Art. 99

1.  An appeal shall lie from decisions of any of the decision-making instances 
of the Office listed in points (a) to (d) of Article 159, and, where appropriate, 
point (f) of that Article. Those decisions shall take effect only as from the date 
of  expiration  of  the  appeal  period  referred  to  in  Article  68.  The  filing  of  the 
appeal shall have suspensive effect.

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

Article 67
Persons entitled to appeal and to be parties to appeal proceedings

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

Article 68
Time limit and form of appeal

EUTMDR 
Art. 21-26

1.  Notice of appeal shall be filed in writing at the Office within two months 
of the date of notification of the decision. The notice shall be deemed to have 
been filed only when the fee for appeal has been paid. It shall be filed in the 
language of the proceedings in which the decision subject to appeal was taken. 
Within four months of the date of notification of the decision, a written state-
ment setting out the grounds of appeal shall be filed.

2. 
In  inter  partes  proceedings,  the  defendant  may,  in  his  response,  seek 
a decision annulling or altering the contested decision on a point not raised in 
the appeal. Such submissions shall cease to have effect should the appellant 
discontinue the proceedings.

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73

Article 69
Revision of decisions in ex parte cases

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

EUTMDR 
Art. 34

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

Article 70
Examination of appeals

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

1. 
appeal is allowable.

EUTMDR 
Art. 27, 31

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

Article 71
Decisions in respect of appeals

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

EUTMR 
Art. 66, 
165 
EUTMDR 
Art. 32

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

3. 
The decisions of the Board of Appeal shall take effect only as from the 
date of expiry of the period referred to in Article 72(5) or, if an action has been 
brought before the General Court within that period, as from the date of dis-
missal of such action or of any appeal filed with the Court of Justice against 
the decision of the General Court.

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Article 72
Actions before the Court of Justice

EUTMR 
Art. 71, 
165 
EUTMDR 
Art. 35

1.  Actions may be brought before the General Court against decisions of the 
Boards of Appeal in relation to appeals.

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

The General Court shall have jurisdiction to annul or to alter the contested 

3. 
decision.

The action shall be open to any party to proceedings before the Board of 

4. 
Appeal adversely affected by its decision.

The action shall be brought before the General Court within two months of 

5. 
the date of notification of the decision of the Board of Appeal.

6. 
The Office shall take the necessary measures to comply with the judg-
ment of the General Court or, in the event of an appeal against that judgment, 
the Court of Justice.

Article 73
Delegation of powers

The  Commission  is  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 208 specifying:

the formal content of the notice of appeal referred to in Article 68 and the 

(a) 
procedure for the filing and the examination of an appeal;

the formal content and form of the Board of Appeal’s decisions as referred 

(b) 
to in Article 71;

(c) 

the reimbursement of the appeal fee referred to in Article 68.

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75

CHAPTER VIII 
SPECIFIC PROVISIONS ON EUROPEAN UNION 
COLLECTIVE MARKS AND CERTIFICATION MARKS

SECTION 1 
EU collective marks

Article 74
EU collective marks

1.  A  European  Union  collective  mark  (‘EU  collective  mark’)  shall  be  an  EU 
trade  mark  which  is  described  as  such  when  the  mark  is  applied  for  and  is 
capable of distinguishing the goods or services of the members of the associa-
tion which is the proprietor of the mark from those of other undertakings. Asso-
ciations of  manufacturers, producers,  suppliers  of  services, or  traders which, 
under  the  terms  of  the  law  governing  them,  have  the  capacity  in  their  own 
name to have rights and obligations of all kinds, to make contracts or accom-
plish other legal acts, and to sue and be sued, as well as legal persons governed 
by public law, may apply for EU collective marks.

EUTMR 
Art. 4, 194 
EUTMIR 
Art. 2 

2.  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 EU collective marks within the meaning of paragraph 1. An EU 
collective  mark  shall  not  entitle  the  proprietor  to  prohibit  a  third  party  from 
using  in  the  course  of  trade  such  signs  or  indications,  provided  that  he  uses 
them in accordance with honest practices in industrial or commercial matters; 
in particular, such a mark shall not be invoked against a third party who is enti-
tled to use a geographical name.

3.  Chapters I to VII and IX to XIV shall apply to EU collective marks to the 
extent that this section does not provide otherwise.

Article 75
Regulations governing use of an EU collective mark

1.  An applicant for an EU collective mark shall submit regulations governing 
use within two months of the date of filing.

2. 
The regulations governing use shall specify the persons authorised to use 
the  mark,  the  conditions  of  membership  of  the  association  and,  where  they 
exist, the conditions of use of the mark, including sanctions. The regulations 
governing use of a mark referred to in Article 74(2) shall authorise any per-

EUTMR 
Art. 194 
EUTMDR 
Art. 76 
EUTMIR 
Art. 16 

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son whose goods or services originate in the geographical area concerned to 
become a member of the association which is the proprietor of the mark.

3. 
The Commission shall adopt implementing acts specifying the details to 
be contained in the regulations referred to in paragraph 2 of this Article. Those 
implementing acts shall be adopted in accordance with the examination proce-
dure referred to in Article 207(2).

Article 76
Refusal of the application

1. 
In addition to the grounds for refusal of an EU trade mark application pro-
vided for in Articles 41 and 42, an application for an EU collective mark shall be 
refused where the provisions of Articles 74 or 75 are not satisfied, or where the 
regulations governing use are contrary to public policy or to accepted principles 
of morality.

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

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

Article 77
Observations by third parties

EUTMR 
Art. 79

Where  written  observations  on  an  EU  collective  mark  are  submitted  to  the 
Office  pursuant  to  Article  45,  those  observations  may  also  be  based  on  the 
particular grounds on which the application for an EU collective mark should be 
refused pursuant to Article 76.

Article 78
Use of marks

EUTMR 
Art. 18, 47, 
58, 139

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

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77

Article 79
Amendment of the regulations governing use of the EU collective mark

The  proprietor  of  an  EU  collective  mark  shall  submit  to  the  Office  any 

1. 
amended regulations governing use.

The amendment shall not be mentioned in the Register if the amended 
2. 
regulations do not satisfy the requirements of Article 75 or involve one of the 
grounds for refusal referred to in Article 76.

EUTMR 
Art. 111 
EUTMIR 
Art. 16 

3.  Written  observations  made  in  accordance  with  Article  77  may  also  be 
submitted with regard to amended regulations governing use.

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

Article 80
Persons who are entitled to bring an action for infringement

The provisions of Article 25(3) and (4) concerning the rights of licensees 

1. 
shall apply to every person who has authority to use an EU collective mark.

EUTMR 
Art. 130

The proprietor of an EU collective mark shall be entitled to claim compen-
2. 
sation 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 81
Grounds for revocation

Apart from the grounds for revocation provided for in Article 58, the rights of 
the proprietor of an EU collective mark shall be revoked on application to the 
Office or on the basis of a counterclaim in infringement proceedings, if:

EUTMR 
Art. 75, 
111

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

(b) 
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 
76(2);

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(c)  an  amendment  to  the  regulations  governing  use  of  the  mark  has  been 
mentioned in the Register in breach of the provisions of Article 79(2), unless 
the proprietor of the mark, by further amending the regulations governing use, 
complies with the requirements of those provisions.

Article 82
Grounds for invalidity

Apart from the grounds for invalidity provided for in Articles 59 and 60, an EU 
collective mark which is registered in breach of the provisions of Article 76 shall 
be declared invalid on application to the Office or on the basis of a counterclaim 
in infringement proceedings, unless the proprietor of the mark, by amending the 
regulations governing use, complies with the requirements of those provisions.

SECTION 2 
EU certification marks

Article 83
EU certification marks

EUTMR 
Art. 4 
EUTMIR 
Art. 2 

1.  An EU certification mark shall be an EU 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 material, 
mode of manufacture of goods or performance of services, quality, accuracy or 
other characteristics, with the exception of geographical origin, from goods and 
services which are not so certified.

2.  Any natural or legal person, including institutions, authorities and bodies 
governed by public law, may apply for EU certification marks provided that such 
person does not carry on a business involving the supply of goods or services of 
the kind certified.

3.  Chapters I to VII and IX to XIV shall apply to EU certification marks to the 
extent that this Section does not provide otherwise.

Article 84
Regulations governing use of an EU certification mark

EUTMR 
Art. 194 
EUTMDR 
Art. 76 
EUTMIR 
Art.17 

1.  An applicant for an EU certification mark shall submit regulations govern-
ing the use of the EU certification mark within two months of the date of filing.

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 

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79

body  is  to  test  those  characteristics  and  to  supervise  the  use  of  the  mark. 
Those regulations shall also specify the conditions of use of the mark, including 
sanctions.

3. 
The Commission shall adopt implementing acts specifying the details to 
be contained in the regulations referred to in paragraph 2 of this Article. Those 
implementing acts shall be adopted in accordance with the examination proce-
dure referred to in Article 207(2).

Article 85
Refusal of the application

1. 
In  addition  to  the  grounds  for  refusal  of  an  EU  trade  mark  application 
provided for in Articles 41 and 42, an application for an EU certification mark 
shall be refused where the conditions set out in Articles 83 and 84 are not sat-
isfied, or where the regulations governing use are contrary to public policy or to 
accepted principles of morality.

2.  An  application  for  an  EU  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 certi-
fication 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 para-
graphs 1 and 2.

Article 86
Observations by third parties

Where written observations on an EU certification mark are submitted to the 
Office  pursuant  to  Article  45,  those  observations  may  also  be  based  on  the 
particular grounds on which the application for an EU certification mark should 
be refused pursuant to Article 85.

EUTMR 
Art. 88

Article 87
Use of the EU certification mark

Use of an EU certification mark by any person who has authority to use it pur-
suant to the regulations governing use referred to in Article 84 shall satisfy the 
requirements of this Regulation, provided that the other conditions laid down in 
this Regulation with regard to the use of EU trade marks are fulfilled.

EUTMR 
Art. 18, 47, 
58, 139

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EUTMR 
Art. 111 
EUTMIR 
Art.17 

Article 88
Amendment of the regulations governing use of the EU certification mark

The proprietor of an EU certification mark shall submit to the Office any 

1. 
amended regulations governing use.

2.  Amendments shall not be mentioned in the Register where the regulations 
as amended do not satisfy the requirements of Article 84 or involve one of the 
grounds for refusal referred to in Article 85.

3.  Written observations in accordance with Article 86 may also be submitted 
with regard to amended regulations governing use.

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

Article 89
Transfer

By way of derogation from Article 20(1), an EU certification mark may only be 
transferred to a person who meets the requirements of Article 83(2).

Article 90
Persons who are entitled to bring an action for infringement

EUTMR 
Art. 130

1.  Only  the  proprietor  of  an  EU  certification  mark,  or  any  person  specifi-
cally authorised by him to that effect, shall be entitled to bring an action for 
infringement.

2. 
The proprietor of an EU certification mark shall be entitled to claim com-
pensation on behalf of persons who have authority to use the mark where they 
have sustained damage as a consequence of unauthorised use of the mark.

Article 91
Grounds for revocation

EUTMR 
Art. 84, 
111 
EUTMIR 
Art.17 

In addition to the grounds for revocation provided for in Article 58, the rights 
of the proprietor of an EU certification mark shall be revoked on application to 
the Office or on the basis of a counterclaim in infringement proceedings, where 
any of the following conditions is fulfilled:

the proprietor no longer complies with the requirements set out in Article 

(a) 
83(2);

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81

(b) 
the proprietor does not take reasonable steps to prevent the EU certifica-
tion mark being used in a manner that is incompatible with the conditions of 
use laid down in the regulations governing use, amendments to which have, 
where appropriate, been mentioned in the Register;

(c) 
the manner in which the EU certification mark has been used by the pro-
prietor  has  caused  it  to  become  liable  to  mislead  the  public  in  the  manner 
referred to in Article 85(2);

(d)  an  amendment  to  the  regulations  governing  use  of  the  EU  certification 
mark has been mentioned in the Register in breach of Article 88(2), unless the 
proprietor  of  the  mark,  by  further  amending  the  regulations  governing  use, 
complies with the requirements of that Article.

Article 92
Grounds for invalidity

In  addition  to  the  grounds  for  invalidity  provided  for  in  Articles  59  and  60, 
an  EU  certification  mark  which  is  registered  in  breach  of  Article  85  shall  be 
declared invalid on application to the Office or on the basis of a counterclaim 
in infringement proceedings, unless the proprietor of the EU certification mark, 
by amending the regulations governing use, complies with the requirements of 
Article 85.

Article 93
Conversion

Without prejudice to Article 139(2), conversion of an application for an EU cer-
tification  mark  or  of  a  registered  EU  certification  mark  shall  not  take  place 
where the national law of the Member State concerned does not provide for 
the registration of guarantee or certification marks pursuant to Article 28 of 
Directive (EU) 2015/2436.

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CHAPTER IX 
PROCEDURE

SECTION 1 
General provisions

Article 94
Decisions and communications of the Office

1.  Decisions of the Office shall state the reasons on which they are based. 
They shall be based only on reasons or evidence on which the parties concerned 
have had an opportunity to present their comments. Where oral proceedings 
are held before the Office, the decision may be given orally. Subsequently, the 
decision shall be notified in writing to the parties.

2.  Any decision, communication or notice from the Office shall indicate the 
department or division of the Office as well as the name or the names of the 
official or officials responsible. They shall be signed by that official or those 
officials,  or,  instead  of  a  signature,  carry  a  printed  or  stamped  seal  of  the 
Office. The Executive Director may determine that other means of identifying 
the department or division of the Office and the name of the official or officials 
responsible,  or  an  identification  other  than  a  seal,  may  be  used  where  deci-
sions, communications or notices from the Office are transmitted by telecopier 
or any other technical means of communication.

3.  Decisions of the Office which are open to appeal shall be accompanied 
by a written communication indicating that any notice of appeal is to be filed 
in  writing  at  the  Office  within  two  months  of  the  date  of  notification  of  the 
decision in question. The communications shall also draw the attention of the 
parties to the provisions laid down in Articles 66, 67 and 68. The parties may 
not plead any failure on the part of the Office to communicate the availability 
of appeal proceedings.

Article 95
Examination of the facts by the Office of its own motion

EUTMR 
Art. 46, 58, 
60 
EUTMDR 
Art. 8, 10, 
17, 27

1. 
In  proceedings  before  it  the  Office  shall  examine  the  facts  of  its  own 
motion; however, in proceedings relating to relative grounds for refusal of reg-
istration,  the  Office  shall  be  restricted  in  this  examination  to  the  facts,  evi-
dence and arguments provided by the parties and the relief sought. In invalidity 
proceedings pursuant to Article 59, the Office shall limit its examination to the 
grounds and arguments submitted by the parties.

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83

The Office may disregard facts or evidence which are not submitted in due 

2. 
time by the parties concerned.

Article 96
Oral proceedings

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

EUTMDR 
Art. 49-54

2.  Oral  proceedings  before  the  examiners,  the  Opposition  Division  and  the 
Department in charge of the Register shall not be public.

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

The Commission is empowered to adopt delegated acts in accordance with 
4. 
Article 208 specifying the detailed arrangements for oral proceedings, includ-
ing  the  detailed  arrangements  for  the  use  of  languages  in  accordance  with 
Article 146.

Article 97
Taking of evidence

In  any  proceedings  before  the  Office,  the  means  of  giving  or  obtaining 

1. 
evidence shall include the following:

EUTMDR 
Art. 51-55

(a)  hearing the parties;

(b) 

requests for information;

(c) 

the production of documents and items of evidence;

(d)  hearing witnesses;

(e)  opinions by experts;

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

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The relevant department may commission one of its members to examine 

2. 
the evidence adduced.

3. 
If the Office considers it necessary for a party, witness or expert to give 
evidence orally, it shall issue a summons to the person concerned to appear 
before it. The period of notice provided in such summons shall be at least one 
month, unless they agree to a shorter period.

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

5. 
The  Executive  Director  shall  determine  the  amounts  of  expenses  to  be 
paid, including advances, as regards the costs of taking of evidence as referred 
to in this Article.

The Commission is empowered to adopt delegated acts in accordance with 

6. 
Article 208 specifying the detailed arrangements for the taking of evidence.

Article 98
Notification

EUTMDR 
Art. 56-62

1. 
The Office shall, as a matter of course, notify those concerned of deci-
sions and summonses and of any notice or other communication from which 
a time limit is reckoned, or of which those concerned are to be notified under 
other provisions of this Regulation or of acts adopted pursuant to this Regula-
tion, or of which notification has been ordered by the Executive Director.

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

3.  Notification may be effected by different means, including by electronic 
means.  The  details  regarding  electronic  means  shall  be  determined  by  the 
Executive Director.

4.  Where notification is to 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.

The Commission is empowered to adopt delegated acts in accordance with 

5. 
Article 208 specifying the detailed arrangements for notification.

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85

Article 99
Notification of loss of rights

Where  the  Office  finds  that  the  loss  of  any  rights  results  from  this  Regula-
tion or acts adopted pursuant to this Regulation, without any decision having 
been taken, it shall communicate this to the person concerned in accordance 
with Article 98. The latter may apply for a decision on the matter within two 
months of notification of the communication, if he considers that the finding 
of the Office is incorrect. The Office shall adopt such a decision only where it 
disagrees with the person requesting it; otherwise the Office shall amend its 
finding and inform the person requesting the decision.

EUTMR 
Art. 41, 94

Article 100
Communications to the Office

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

EUTMDR 
Art. 63, 66

The Commission is empowered to adopt delegated acts in accordance with 
2. 
Article 208 specifying the rules on the means of communication, including the 
electronic means of communication, to be used by the parties to proceedings 
before the Office and the forms to be made available by the Office.

Article 101
Time limits

1. 
Time  limits  shall  be  laid  down  in  terms  of  full  years,  months,  weeks  or 
days. Calculation shall start on the day following the day on which the relevant 
event occurred. The duration of time limits shall be no less than one month and 
no more than six months.

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

EUTMR 
Art. 104-
106 
EUTMDR 
Art. 67-69, 
71, 72

The Executive Director shall determine the duration of the period of inter-
3. 
ruption in the case of a general interruption in the delivery of post in the Mem-
ber State where the Office is located or, in the case of an actual interruption of 
the Office’s connection to admitted electronic means of communication.

4. 
If an exceptional occurrence, such as a natural disaster or strike, interrupts 
or interferes with proper communication from the parties to the proceedings to 

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the Office or vice-versa, the Executive Director may determine that for parties 
to the proceedings having their residence or registered office in the Member 
State concerned or who have appointed a representative with a place of busi-
ness in the Member 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 Office, such determination of the Executive 
Director shall specify that it applies in respect of all parties to the proceedings.

The Commission is empowered to adopt delegated acts in accordance with 
5. 
Article  208  specifying  the  details  regarding  the  calculation  and  duration  of 
time limits.

Article 102
Correction of errors and manifest oversights

EUTMR 
Art. 44, 49, 
51, 111, 
116

1. 
The Office shall correct any linguistic errors or errors of transcription and 
manifest oversights in its decisions, or technical errors attributable to it in reg-
istering an EU trade mark or in publishing the registration of its own motion or 
at the request of a party.

2.  Where the correction of errors in the registration of an EU trade mark or 
the  publication  of  the  registration  is  requested  by  the  proprietor,  Article  55 
shall apply mutatis mutandis.

3.  Corrections of errors in the registration of an EU trade mark and in the 
publication of the registration shall be published by the Office.

Article 103
Revocation of decisions

EUTMR 
Art. 94, 
111 
EUTMDR 
Art. 70

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

2.  Cancellation or revocation as referred to in paragraph 1 shall be deter-
mined, ex officio or at the request of one of the parties to the proceedings, by 
the department which made the entry or took the decision. The cancellation 
of the entry in the Register or the revocation of the decision shall be effected 
within one year of the date on which the entry was made in the Register or that 
decision was taken, after consultation with the parties to the proceedings and 

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87

any proprietor of rights to the EU trade mark in question that are entered in the 
Register. The Office shall keep records of any such cancellation or revocation.

3. 
The Commission is empowered to adopt delegated acts in accordance with 
Article 208 specifying the procedure for the revocation of a decision or for the 
cancellation of an entry in the Register.

4. 
This Article shall be without prejudice to the right of the parties to submit 
an appeal under Articles 66 and 72, or to the possibility of correcting errors 
and  manifest  oversights  under  Article  102.  Where  an  appeal  has  been  filed 
against  a  decision  of  the  Office  containing  an  error,  the  appeal  proceedings 
shall become devoid of purpose upon revocation by the Office of its decision 
pursuant to paragraph 1 of this Article. In the latter case, the appeal fee shall 
be reimbursed to the appellant.

Article 104
Restitutio in integrum

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

EUTMR 
Art. 99, 
101

2. 
The application shall be filed in writing within two months of the removal 
of  the  obstacle  to  compliance  with  the  time  limit.  The  omitted  act  shall  be 
completed within this period. The application shall only be admissible within the 
year immediately following the expiry of the unobserved time limit. In the case 
of non-submission of the request for renewal of registration or of non-payment 
of a renewal fee, the further period of six months provided in the third sentence 
of Article 53(3) shall be deducted from the period of one year.

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

The department competent to decide on the omitted act shall decide upon 

4. 
the application.

This Article shall not be applicable to the time limits referred to in para-

5. 
graph 2 of this Article, Article 46(1) and (3) and Article 105.

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

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

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

Article 105
Continuation of proceedings

EUTMR 
Art. 101

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

2. 
This Article shall not apply to the time limits laid down in Article 32, Article 
34(1), Article 38(1), Article 41(2), Article 46(1) and (3), Article 53(3), Article 68, 
Article 72(5), Article 104(2) and Article 139, or to the time limits laid down in 
paragraph 1 of this Article or the time limit for claiming seniority pursuant to 
Article 39 after the application has been filed.

The department competent to decide on the omitted act shall decide upon 

3. 
the application.

4. 
If the Office accepts the application, the consequences of having failed to 
observe the time limit shall be deemed not to have occurred. If a decision has 
been taken between the expiry of that time limit and the request for the con-
tinuation 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, following the review, the Office con-

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89

EUTMR 
Art. 23, 24, 
53, 101 
EUTMDR 
Art. 67-69, 
72-74

cludes that the original decision does not require to be altered, it shall confirm 
that decision in writing.

5. 

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

Article 106
Interruption of proceedings

1. 

Proceedings before the Office shall be interrupted:

in the event of the death or legal incapacity of the applicant for, or pro-
(a) 
prietor  of,  an  EU  trade  mark  or  of  the  person  authorised  by  national  law  to 
act on his behalf. To the extent that that death or incapacity does not affect 
the authorisation of a representative appointed under Article 120, proceedings 
shall be interrupted only on application by such representative;

(b) 
in the event of the applicant for, or proprietor of, an EU trade mark being 
prevented, for legal reasons resulting from action taken against his property, 
from continuing the proceedings before the Office;

(c) 
in the event of the death or legal incapacity of the representative of an 
applicant for, or proprietor of, an EU trade mark, or of that representative being 
prevented, for legal reasons resulting from action taken against his property, 
from continuing the proceedings before the Office.

Proceedings before the Office shall be resumed as soon as the identity of 

2. 
the person authorised to continue them has been established.

The Commission is empowered to adopt delegated acts in accordance with 
3. 
Article 208 specifying the detailed arrangements for the resumption of pro-
ceedings before the Office.

Article 107
Reference to general principles

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

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Article 108
Termination of financial obligations

EUTMR 
Art. 178-
181 , 
Annex I

Rights of the Office to the payment of a fee shall be extinguished after 

1. 
four years from the end of the calendar year in which the fee fell due.

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

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

SECTION 2 
Costs

Article 109
Costs

EUTMDR 
Art. 9, 54 
EUTMIR 
Art. 18 

1. 
The  losing  party  in  opposition  proceedings,  proceedings  for  revocation, 
proceedings  for  a  declaration  of  invalidity  or  appeal  proceedings  shall  bear 
the fees paid by the other party. Without prejudice to Article 146(7), the losing 
party  shall  also  bear  all  costs  incurred  by  the  other  party  that  are  essential 
to the proceedings, including travel and subsistence and the remuneration of 
a representative within the meaning of Article 120(1), within the limits of the 
scales set for each category of costs in the implementing act to be adopted in 
accordance with paragraph 2 of this Article. The fees to be borne by the losing 
party shall be limited to the fees paid by the other party for opposition, for an 
application for revocation or for a declaration of invalidity of the EU trade mark 
and for appeal.

2. 
The Commission shall adopt implementing acts specifying the maximum 
rates for costs essential to the proceedings and actually incurred by the suc-
cessful party. Those implementing acts shall be adopted in accordance with the 
examination procedure referred to in Article 207(2).

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91

When specifying such amounts with respect to travel and subsistence costs, 
the Commission shall take into account the distance between the place of resi-
dence or business of the party, representative or witness or expert and the place 
where the oral proceedings are held, the procedural stage at which the costs 
have been incurred, and, as far as costs of representation within the meaning 
of Article 120(1) are concerned, the need to ensure that the obligation to bear 
the costs may not be misused for tactical reasons by the other party. Subsist-
ence expenses shall be calculated in accordance with the Staff Regulations of 
Officials of the Union and the Conditions of Employment of Other Servants of 
the Union, laid down in Council Regulation (EEC, Euratom, ECSC) No 259/68 (15) 
(‘the Staff Regulations’ and ‘Conditions of Employment’ respectively).

The losing party shall bear the costs for one opposing party only and, where 
applicable, one representative only.

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

The party who terminates the proceedings by withdrawing the EU trade 
4. 
mark application, the opposition, the application for revocation of rights, the 
application for a declaration of invalidity or the appeal, or by not renewing reg-
istration of the EU trade mark or by surrendering the EU trade mark, shall bear 
the fees and the costs incurred by the other party as stipulated in paragraphs 
1 and 3.

5.  Where a case does not proceed to judgment the costs shall be at the dis-
cretion of the Opposition Division, Cancellation Division or Board of Appeal.

6.  Where the parties conclude before the  Opposition Division, Cancellation 
Division or Board of Appeal a settlement of costs differing from that provided 
for  in  paragraphs  1  to  5,  the  department  concerned  shall  take  note  of  that 
agreement.

7. 
The Opposition Division or Cancellation Division or Board of Appeal shall 
fix the amount of the costs to be paid pursuant to paragraphs 1 to 6 of this 
Article when the costs to be paid are limited to the fees paid to the Office and 
the representation costs. In all other cases, the registry of the Board of Appeal 
or  a  member  of  the  staff  of  the  Opposition  Division  or  Cancellation  Division 
shall fix, on request, the amount of the costs to be reimbursed. The request 
shall  be  admissible  only  for  the  period  of  two  months  following  the  date  on 

(15) OJ L 56, 4.3.1968, p. 1.

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which the decision for which an application was made for the costs to be fixed 
becomes final and shall be accompanied by a bill and supporting evidence. For 
the  costs  of  representation  pursuant  to  Article  120(1),  an  assurance  by  the 
representative that the costs have been incurred shall be sufficient. For other 
costs, it shall be sufficient if their plausibility is established. Where the amount 
of the costs is fixed pursuant to the first sentence of this paragraph, represen-
tation costs shall be awarded at the level laid down in the implementing act 
adopted  pursuant  to  paragraph  2  of  this  Article  and  irrespective  of  whether 
they have been actually incurred.

The  decision  on  the  fixing  of  costs,  stating  the  reasons  on  which  it  is 
8. 
based, may be reviewed by a decision of the Opposition Division or Cancellation 
Division or Board of Appeal on a request filed within one month of the date of 
notification of the awarding of costs. It shall not be deemed to be filed until 
the fee for reviewing the amount of the costs has been paid. The Opposition 
Division, the Cancellation Division or the Board of Appeal, as the case may be, 
shall take a decision on the request for a review of the decision on the fixing of 
costs without oral proceedings.

Article 110
Enforcement of decisions fixing the amount of costs

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

2. 
Enforcement shall be governed by the rules of civil procedure in force in 
the State in the territory of which it is carried out. Each Member State shall 
designate  a  single  authority  responsible  for  verifying  the  authenticity  of  the 
decision referred to in paragraph 1 and shall communicate its contact details to 
the Office, the Court of Justice and the Commission. The order for the enforce-
ment of the decision shall be appended to the decision by that authority, with 
the verification of the authenticity of the decision as the sole formality.

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

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

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93

SECTION 3 
Information which may be made available to the public and to 
the authorities of the Member States

Article 111
Register of EU trade marks

The Office shall keep a Register of EU trade marks which it shall keep up 

1. 
to date.

The Register shall contain the following entries relating to EU trade mark 

2. 
applications and registrations:

EUTMR 
Art. 112, 
116, 147, 
185 
EUTMIR 
Art. 19 

(a) 

the date of filing the application;

(b) 

the file number of the application;

(c) 

the date of the publication of the application;

(d) 

the name and address of the applicant;

the name and business address of the representative, other than a repre-

(e) 
sentative as referred to in the first sentence of Article 119(3);

the  representation  of  the  mark,  with  indications  as  to  its  nature;  and, 

(f) 
where applicable, a description of the mark;

(g)  an indication of the goods and services by their names;

(h)  particulars of claims of priority pursuant to Article 35;

(i) 

particulars of claims of exhibition priority pursuant to Article 38;

(j)  particulars  of  claims  of  seniority  of  a  registered  earlier  trade  mark  as 
referred to in Article 39;

(k)  a statement that the mark has become distinctive in consequence of the 
use which has been made of it, pursuant to Article 7(3);

(l)  an indication that the mark is a collective mark;

(m)  an indication that the mark is a certification mark;

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(n) 
the language in which the application was filed and the second language 
which the applicant has indicated in his application, pursuant to Article 146(3);

the date of registration of the mark in the Register and the registration 

(o) 
number;

(p)  a statement that the application is the result of a transformation of an 
international registration designating the Union, pursuant to Article 204 of this 
Regulation, together with the date of the international registration pursuant to 
Article 3(4) of the Madrid Protocol or the date on which the territorial extension 
to  the  Union  made  subsequent  to  the  international  registration  pursuant  to 
Article 3ter(2) of the Madrid Protocol was recorded and, where applicable, the 
date of priority of the international registration.

The Register shall also contain the following entries, each accompanied by 

3. 
the date of recording of such entry:

(a)  changes  in  the  name,  address  or  nationality  of  the  proprietor  of  an  EU 
trade mark or a change in the State in which he is domiciled or has his seat or 
establishment;

(b)  changes in the name or business address of the representative, other than 
a representative as referred to in the first sentence of Article 119(3);

(c)  where a new representative is appointed, the name and business address 
of that representative;

(d)  amendments and alterations of the mark, pursuant to Articles 49 and 54, 
and corrections of errors;

(e)  notice of amendments to the regulations governing the use of the collec-
tive mark pursuant to Article 79;

(f)  particulars  of  claims  of  seniority  of  a  registered  earlier  trade  mark  as 
referred to in Article 39, pursuant to Article 40;

(g) 

total or partial transfers pursuant to Article 20;

(h)  creation or transfer of a right in rem pursuant to Article 22, and the nature 
of the right in rem;

levy of execution pursuant to Article 23 and insolvency proceedings pur-

(i) 
suant to Article 24;

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95

the grant or transfer of a licence pursuant to Article 25 and, where appli-

(j) 
cable, the type of licence;

renewal of a registration pursuant to  Article 53,  the date from  which  it 

(k) 
takes effect and any restrictions pursuant to Article 53(4);

(l)  a  record  of  a  determination  of  the  expiry  of  a  registration  pursuant  to 
Article 53;

(m)  declarations of withdrawal or surrender by the proprietor of the mark pur-
suant to Articles 49 and 57 respectively;

(n) 
the date of submission and the particulars of an opposition pursuant to 
Article 46, of an application pursuant to Article 63, or a counterclaim pursuant 
to Article 128(4) for revocation or for a declaration of invalidity, or of an appeal 
pursuant to Article 68;

(o) 
the date and content of a decision on an opposition, on an application or 
counterclaim pursuant to Article 64(6) or the third sentence of Article 128(6), 
or on an appeal pursuant to Article 71;

(p)  a  record  of  the  receipt  of  a  request  for  conversion  pursuant  to  Article 
140(2);

the  cancellation  of  the  representative  recorded  pursuant  to  point  (e)  of 

(q) 
paragraph 2 of this Article;

(r) 

the cancellation of the seniority of a national mark;

the modification to or cancellation from the Register of the items referred 

(s) 
to in points (h), (i) and (j) of this paragraph;

the  replacement  of  the  EU  trade  mark  by  an  international  registration 

(t) 
pursuant to Article 197;

(u) 
the date and number of international registrations based on the EU trade 
mark application which has been registered as an EU trade mark pursuant to 
Article 185(1);

the date and number of international registrations based on the EU trade 

(v) 
mark pursuant to Article 185(2);

(w)  the  division  of  an  application  pursuant  to  Article  50  and  the  division  of 
a  registration  pursuant  to  Article  56,  together  with  the  items  referred  to  in 

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paragraph 2 of this Article in respect of the divisional registration, as well as 
the list of goods and services of the original registration as amended;

(x) 
the revocation of a decision or an entry in the Register pursuant to Arti-
cle  103,  where  the  revocation  concerns  a  decision  or  entry  which  has  been 
published;

(y)  notice  of  amendments  to  the  regulations  governing  the  use  of  the  EU 
certification mark pursuant to Article 88.

The Executive Director may determine that items other than those referred 
4. 
to in paragraphs 2 and 3 of this Article are to be entered in the Register, subject 
to Article 149(4).

5. 
The Register may be maintained in electronic form. The Office shall col-
lect, organise, make public and store the items referred to in paragraphs 2 and 
3, including any personal data, for the purposes laid down in paragraph 8. The 
Office shall keep the register easily accessible for public inspection.

The proprietor of an EU trade mark shall be notified of any change in the 

6. 
Register.

The Office shall provide certified or uncertified extracts from the Register 

7. 
on request and on payment of a fee.

The processing of the data concerning the entries set out in paragraphs 2 

8. 
and 3, including any personal data, shall take place for the purposes of:

(a)  administering  the  applications  and/or  registrations  as  described  in  this 
Regulation and acts adopted pursuant to it;

(b)  maintaining  a  public  register  for  inspection  by,  and  the  information  of, 
public authorities and economic operators, in order to enable them to exercise 
the  rights  conferred  on  them  by  this  Regulation  and  be  informed  about  the 
existence of prior rights belonging to third parties; and

(c)  producing reports and statistics enabling the Office to optimise its opera-
tions and improve the functioning of the system.

9.  All the data, including personal data, concerning the entries in paragraphs 
2 and 3 shall be considered to be of public interest and may be accessed by 
any third party. For reasons of legal certainty, the entries in the Register shall 
be kept for an indefinite period of time.

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97

Article 112
Database

1. 
In  addition  to  the  obligation  to  keep  a  Register  within  the  meaning  of 
Article 111, the Office shall collect and store in an electronic database all the 
particulars provided by applicants or any other party to the proceedings pursu-
ant to this Regulation or acts adopted pursuant to it.

2. 
The electronic database may include personal data, beyond those included 
in the Register pursuant to Article 111, to the extent that such particulars are 
required by this Regulation or by acts adopted pursuant to it. The collection, 
storage and processing of such data shall serve the purposes of:

(a)  administering  the  applications  and/or  registrations  as  described  in  this 
Regulation and in acts adopted pursuant to it;

(b)  accessing the information necessary for conducting the relevant proceed-
ings more easily and efficiently;

(c)  communicating with the applicants and other parties to the proceedings;

(d)  producing reports and statistics enabling the Office to optimise its opera-
tions and improve the functioning of the system.

3. 
The  Executive  Director  shall  determine  the  conditions  of  access  to  the 
electronic database and the manner in which its contents, other than the per-
sonal data referred to in paragraph 2 of this Article but including those listed 
in Article 111, may be made available in machine-readable form, including the 
charge for such access.

4.  Access to the personal data referred to in paragraph 2 shall be restricted 
and such data shall not be made publicly available unless the party concerned 
has given his express consent.

5.  All  data  shall  be  kept  indefinitely.  However,  the  party  concerned  may 
request the removal of any personal data from the database after 18 months 
from the expiry of the EU trade mark or the closure of the relevant inter partes 
procedure. The party concerned shall have the right to obtain the correction of 
inaccurate or erroneous data at any time.

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Article 113
Online access to decisions

EUTMR 
Art. 94, 
149, 151, 
152

1. 
The decisions of the Office shall be made available online for the informa-
tion and consultation of the general public in the interest of transparency and 
predictability. Any party to the proceedings that led to the adoption of the deci-
sion may request the removal of any personal data included in the decision.

2. 
The Office may provide online access to judgments of national and Union 
courts  related  to  its  tasks  in  order  to  raise  public  awareness  of  intellectual 
property  matters  and  promote  convergence  of  practices.  The  Office  shall 
respect the conditions of the initial publication with regard to personal data.

EUTMR 
Art. 115, 
117 
EUTMIR 
Art. 21 

Article 114
Inspection of files

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

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

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

4.  Where the files are inspected pursuant to paragraph 2 or 3 of this Article, 
documents relating to exclusion or objection pursuant to Article 169, draft deci-
sions and opinions, and all other internal documents used for the preparation 
of decisions and opinions, as well as parts of the file which the party concerned 
showed a special interest in keeping confidential before the request for inspec-
tion of the files was made, unless inspection of such parts of the file is justified 
by overriding, legitimate interests of the party seeking inspection, may be with-
held from inspection.

5. 
Inspection of the files of EU trade mark applications and of registered EU 
trade marks shall be of the original document, or of copies thereof, or of techni-
cal means of storage if the files are stored in this way. The Executive Director 
shall determine the means of inspection.

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99

6.  Where inspection of files takes place as provided for in paragraph 7, the 
request for inspection of the files shall not be deemed to have been made until 
the required fee has been paid. No fee shall be payable if inspection of techni-
cal means of storage takes place online.

7. 
Inspection of the files shall take place at the premises of the Office. On 
request, inspection of the files shall be effected by means of issuing copies of 
file documents. The issuing of such copies shall be conditional on the payment 
of a fee. The Office shall also issue on request certified or uncertified copies of 
the application for an EU trade mark upon payment of a fee.

8. 
The files kept by the Office relating to international registrations desig-
nating the Union may be inspected on request as from the date of publication 
referred  to  in  Article  190(1),  in  accordance  with  the  conditions  laid  down  in 
paragraphs 1, 3 and 4 of this Article.

9. 
Subject to the restrictions provided for in paragraph 4, the Office may, on 
request, communicate information from any file of an EU trade mark applied 
for or of a registered EU trade mark, subject to payment of a fee. However, the 
Office may require the exercise of the option to obtain inspection of the file 
itself should it deem this to be appropriate in view of the quantity of informa-
tion to be supplied.

Article 115
Keeping of files

1. 
The Office shall keep the files of any procedure relating to an EU trade 
mark  application  or  EU  trade  mark  registration.  The  Executive  Director  shall 
determine the form in which those files shall be kept.

EUTMR 
Art. 114

2.  Where the files are kept in electronic format, the electronic files, or back-
up  copies  thereof,  shall  be  kept  indefinitely.  The  original  documents  filed  by 
parties to the proceedings, and forming the basis of such electronic files, shall 
be disposed of after a period following their reception by the Office, which shall 
be determined by the Executive Director.

3.  Where and to the extent that files or parts of the files are kept in any form 
other than electronically, documents or items of evidence constituting part of 
such files shall be kept for at least five years from the end of the year in which 
the  application  is  rejected  or  withdrawn  or  is  deemed  to  be  withdrawn,  the 
registration of the EU trade mark expires completely pursuant to Article 53, the 
complete surrender of the EU trade mark is registered pursuant to Article 57, or 
the EU trade mark is completely removed from the Register pursuant to Article 
64(6) or 128(6).

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EUTMR 
Art. 34, 
111, 118, 
120 
EUTMIR 
Art. 7, 19 

Article 116
Periodical publications

1. 

The Office shall periodically publish:

(a)  a European Union Trade Marks Bulletin containing publications of applica-
tions and of entries made in the Register as well as other particulars relating 
to applications or registrations of EU trade marks the publication of which is 
required under this Regulation or by acts adopted pursuant to it;

(b)  an  Official  Journal  of  the  Office  containing  notices  and  information  of 
a general character issued by the Executive Director, as well as any other infor-
mation relevant to this Regulation or its implementation.

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

The European Union Trade Marks Bulletin shall be published in a manner 

2. 
and at a frequency to be determined by the Executive Director.

3. 
The Official Journal of the Office shall be published in the languages of 
the Office. However, the Executive Director may determine that certain items 
shall be published in the Official Journal of the Office in the official languages 
of the Union.

4. 

The Commission shall adopt implementing acts specifying:

the  date  to  be  taken  as  the  date  of  publication  in  the  European  Union 

(a) 
Trade Marks Bulletin;

(b) 
the manner of publication of entries regarding the registration of a trade 
mark  which  do  not  contain  changes  as  compared  to  the  publication  of  the 
application;

the forms in which editions of the Official Journal of the Office may be 

(c) 
made available to the public.

Those implementing acts shall be adopted in accordance with the examination 
procedure referred to in Article 207(2).

The EUTM Regulation 101

Article 117
Administrative cooperation

1.  Unless  otherwise  provided  in  this  Regulation  or  in  national  laws,  the 
Office  and  the  courts  or  authorities  of  the  Member  States  shall  on  request 
give assistance to each other by communicating information or opening files 
for inspection. Where the Office lays files open to inspection by courts, Public 
Prosecutors’ Offices or central industrial property offices, the inspection shall 
not be subject to the restrictions laid down in Article 114.

EUTMIR 
Art. 20, 21 

The Office shall not charge fees for the communication of information or 

2. 
the opening of files for inspection.

3. 
The  Commission  shall  adopt  implementing  acts  specifying  the  detailed 
arrangements as to how the Office and the authorities of the Member States 
are to exchange information between each other and open files for inspection, 
taking into account the restrictions to which the inspection of files relating to 
EU trade mark applications or registrations is subject, pursuant to Article 114, 
when it is opened to third parties. Those implementing acts shall be adopted in 
accordance with the examination procedure referred to in Article 207(2).

Article 118
Exchange of publications

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

EUTMR 
Art. 116

The Office may conclude agreements relating to the exchange or supply 

2. 
of publications.

SECTION 4 
Representation

Article 119
General principles of representation

Subject to the provisions of paragraph 2, no person shall be compelled to 

1. 
be represented before the Office.

2.  Without prejudice to the second sentence of paragraph 3 of this Article, 
natural or legal persons having neither their domicile nor their principal place of 
business or a real and effective industrial or commercial establishment in the 

EUTMR 
Art. 191, 
193 
EUTMDR 
Art. 73, 74, 
77 
EUTMIR 
Art. 32 

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European Economic Area shall be represented before the Office in accordance 
with Article 120(1) in all proceedings provided for by this Regulation, other than 
the filing of an application for an EU trade mark.

3.  Natural or legal persons having their domicile or principal place of busi-
ness or a real and effective industrial or commercial establishment in the Euro-
pean Economic Area may be represented before the Office by an employee. An 
employee of a legal person to which this paragraph applies may also repre-
sent other legal persons which have economic connections with the first legal 
person, even if those other legal persons have neither their domicile nor their 
principal  place  of  business  nor  a  real  and  effective  industrial  or  commercial 
establishment  within  the  European  Economic  Area.  Employees  who  repre-
sent  persons,  within  the  meaning  of  this  paragraph,  shall,  at  the  request  of 
the Office or, where appropriate, of the party to the proceedings, file with it 
a signed authorisation for insertion in the files.

4.  Where there is more than one applicant or more than one third party act-
ing in common, a common representative shall be appointed.

Article 120
Professional representatives

EUTMDR 
Art. 60, 66, 
73-75 
EUTMIR 
Art. 2 

Representation of natural or legal persons before the Office may only be 

1. 
undertaken by:

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

(b)  professional representatives whose names appear on the list maintained 
for this purpose by the Office.

Representatives acting before the Office shall, at the request of the Office or, 
where appropriate, of the other party to the proceedings, file with it a signed 
authorisation for insertion on the files.

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

(a)  being a national of one of the Member States of the European Economic 
Area;

The EUTM Regulation 103

(b)  having  his  place  of  business  or  employment  in  the  European  Economic 
Area;

(c)  being entitled to represent natural or legal persons in trade mark matters 
before the Benelux Office for Intellectual Property or before the central indus-
trial property office of a Member State of the European Economic Area. Where, 
in the State concerned, the entitlement is not conditional upon the requirement 
of  special  professional  qualifications,  persons  applying  to  be  entered  on  the 
list who act in trade mark matters before the Benelux Office for Intellectual 
Property  or  those  central  industrial  property  offices  shall  have  habitually  so 
acted for at least five years. However, persons whose professional qualification 
to represent natural or legal persons in trade mark matters before the Benelux 
Office  for  Intellectual  Property  or  those  central  industrial  property  offices  is 
officially recognised in accordance with the regulations laid down by the State 
concerned shall not be required to have exercised the profession.

3. 
Entry shall be effected upon request, accompanied by a certificate fur-
nished by the central industrial property office of the Member State concerned, 
indicating that the conditions laid down in paragraph 2 are fulfilled.

4. 

The Executive Director may grant an exemption from:

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

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

5.  A person may be removed from the list of professional representatives at 
his request or when no longer in a capacity to represent. The amendments of 
the list of professional representatives shall be published in the Official Journal 
of the Office.

Article 121
Delegation of powers

The  Commission  is  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 208 specifying:

the conditions and the procedure for the appointment of a common repre-

(a) 
sentative as referred to in Article 119(4);

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(b) 
the  conditions  under  which  employees  referred  to  in  Article  119(3)  and 
professional  representatives  referred  to  in  Article  120(1)  shall  file  with  the 
Office  a  signed  authorisation  in  order  to  undertake  representation,  and  the 
content of that authorisation;

the  circumstances  in  which  a  person  may  be  removed  from  the  list  of 

(c) 
professional representatives referred to in Article 120(5).

CHAPTER X 
JURISDICTION AND PROCEDURE IN LEGAL ACTIONS 
RELATING TO EU TRADE MARKS

SECTION 1 
Application of Union rules on jurisdiction and the recognition 
and enforcement of judgments in civil and commercial 
matters

Article 122
Application of Union rules on jurisdiction and the recognition and 
enforcement of judgments in civil and commercial matters

1.  Unless otherwise specified in this Regulation, the Union rules on jurisdic-
tion and the recognition and enforcement of judgments in civil and commercial 
matters shall apply to proceedings relating to EU trade marks and applications 
for EU trade marks, as well as to proceedings relating to simultaneous and suc-
cessive actions on the basis of EU trade marks and national trade marks.

In the case of proceedings in respect of the actions and claims referred to 

2. 
in Article 124:

(a)  Articles 4 and 6, points 1, 2, 3 and 5 of Article 7 and Article 35 of Regula-
tion (EU) No 1215/2012 shall not apply;

(b)  Articles 25 and 26 of Regulation (EU) No 1215/2012 shall apply subject to 
the limitations in Article 125(4) of this Regulation;

(c) 
the provisions of Chapter II of Regulation (EU) No 1215/2012 which are 
applicable to persons domiciled in a Member State shall also be applicable to 
persons who do not have a domicile in any Member State but have an establish-
ment therein.

The EUTM Regulation 105

3. 
References  in  this  Regulation  to  Regulation  (EU)  No  1215/2012  shall 
include, where appropriate, the Agreement between the European Community 
and the Kingdom of Denmark on jurisdiction and the recognition and enforce-
ment of judgments in civil and commercial matters done on 19 October 2005.

SECTION 2 
Disputes concerning the infringement and validity of EU trade 
marks

Article 123
EU trade mark courts

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

2.  Any change made in the number, names or territorial jurisdiction of the 
courts included in the list of EU trade mark courts communicated by a Member 
State to the Commission in accordance with Article 95(2) of Regulation (EC) No 
207/2009 shall be notified without delay by the Member State concerned to 
the Commission.

The information referred to in paragraph 2 shall be notified by the Com-
3. 
mission to the Member States and published in the Official Journal of the Euro-
pean Union.

Article 124
Jurisdiction over infringement and validity

The EU trade mark courts shall have exclusive jurisdiction:

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

for  actions  for  declaration  of  non-infringement,  if  they  are  permitted 

(b) 
under national law;

(c) 

for all actions brought as a result of acts referred to in Article 11(2);

for counterclaims for revocation or for a declaration of invalidity of the EU 

(d) 
trade mark pursuant to Article 128.

EUTMR 
Art. 123

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Article 125
International jurisdiction

EUTMR 
Art. 123

1. 
Subject to the provisions of this Regulation as well as to any provisions of 
Regulation (EU) No 1215/2012 applicable by virtue of Article 122, proceedings 
in respect of the actions and claims referred to in Article 124 shall be brought 
in the courts of the Member State in which the defendant is domiciled or, if he 
is not domiciled in any of the Member States, in which he has an establishment.

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

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

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

(a)  Article  25  of  Regulation  (EU)  No  1215/2012  shall  apply  if  the  parties 
agree that a different EU trade mark court shall have jurisdiction;

(b)  Article 26 of Regulation (EU) No 1215/2012 shall apply if the defendant 
enters an appearance before a different EU trade mark court.

5. 
Proceedings in respect of the actions and claims referred to in Article 124, 
with the exception of actions for a declaration of non-infringement of an EU 
trade mark, may also be brought in the courts of the Member State in which 
the act of infringement has been committed or threatened, or in which an act 
referred to in Article 11(2) has been committed.

Article 126
Extent of jurisdiction

1.  An EU trade mark court whose jurisdiction is based on Article 125(1) to (4) 
shall have jurisdiction in respect of:

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

(b)  acts referred to in Article 11(2) committed within the territory of any of 
the Member States.

The EUTM Regulation 107

2.  An EU trade mark court whose jurisdiction is based on Article 125(5) shall 
have  jurisdiction  only  in  respect  of  acts  committed  or  threatened  within  the 
territory of the Member State in which that court is situated.

Article 127
Presumption of validity — Defence as to the merits

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

EUTMR 
Art. 58-60, 
62

The validity of an EU trade mark may not be put in issue in an action for 

2. 
a declaration of non-infringement.

3. 
In the actions referred to in points (a) and (c) of Article 124, a plea relat-
ing  to  revocation  of  the  EU  trade  mark  submitted  otherwise  than  by  way  of 
a  counterclaim  shall  be  admissible  where  the  defendant  claims  that  the  EU 
trade mark could be revoked for lack of genuine use at the time the infringe-
ment action was brought.

Article 128
Counterclaims

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

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

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

4. 
The EU trade mark court with which a counterclaim for revocation or for 
a declaration of invalidity of the EU trade mark has been filed shall not proceed 
with the examination of the counterclaim, until either the interested party or 
the court has informed the Office of the date on which the counterclaim was 
filed. The Office shall record that information in the Register. If an application 
for revocation or for a declaration of invalidity of the EU trade mark had already 
been filed before the Office before the counterclaim was filed, the court shall 
be informed thereof by the Office and stay the proceedings in accordance with 

EUTMR 
Art. 58-60, 
62, 63, 
111, 198

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Article 132(1) until the decision on the application is final or the application is 
withdrawn.

5.  Article 64(2) to (5) shall apply.

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

7. 
The  EU  trade  mark  court  hearing  a  counterclaim  for  revocation  or  for 
a  declaration  of  invalidity  may  stay  the  proceedings  on  application  by  the 
proprietor of the EU trade mark and after hearing the other parties and may 
request the defendant to submit an application for revocation or for a declara-
tion of invalidity to the Office within a time limit which it shall determine. If the 
application is not made within the time limit, the proceedings shall continue; 
the counterclaim shall be deemed withdrawn. Article 132(3) shall apply.

Article 129
Applicable law

EUTMR 
Art. 17

1. 

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

2.  On all trade mark matters not covered by this Regulation, the relevant EU 
trade mark court shall apply the applicable national law.

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

Article 130
Sanctions

EUTMR 
Art. 9, 17, 
80, 90, 123

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

The EUTM Regulation 109

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

Article 131
Provisional and protective measures

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

EUTMR 
Art. 123, 
124

2.  An EU trade mark court whose jurisdiction is based on Article 125(1), (2), 
(3) or (4) shall have jurisdiction to grant provisional and protective measures 
which,  subject  to  any  necessary  procedure  for  recognition  and  enforcement 
pursuant to Chapter III of Regulation (EU) No 1215/2012, are applicable in the 
territory of any Member State. No other court shall have such jurisdiction.

Article 132
Specific rules on related actions

1.  An EU trade mark court hearing an action referred to in Article 124 other 
than an action for a declaration of non- infringement shall, unless there are 
special grounds for continuing the hearing, of its own motion after hearing the 
parties or at the request of one of the parties and after hearing the other par-
ties, stay the proceedings where the validity of the EU trade mark is already 
in issue before another EU trade mark court on account of a counterclaim or 
where an application for revocation or for a declaration of invalidity has already 
been filed at the Office.

EUTMR 
Art. 58-60, 
63

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

3.  Where the EU trade mark court stays the proceedings it may order provi-
sional and protective measures for the duration of the stay.

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Article 133
Jurisdiction of EU trade mark courts of second instance — Further appeal

EUTMR 
Art. 123

1.  An appeal to the EU trade mark courts of second instance shall lie from 
judgments of the EU trade mark courts of first instance in respect of proceed-
ings arising from the actions and claims referred to in Article 124.

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

The national rules concerning further appeal shall be applicable in respect 

3. 
of judgments of EU trade mark courts of second instance.

SECTION 3 
Other disputes concerning EU trade marks

Article 134
Supplementary provisions on the jurisdiction of national courts other than 
EU trade mark courts

1.  Within  the  Member  State  whose  courts  have  jurisdiction  under  Article 
122(1) those courts shall have jurisdiction for actions other than those referred 
to in Article 124, which would have jurisdiction ratione loci and ratione materiae 
in the case of actions relating to a national trade mark registered in that State.

2.  Actions relating to an EU trade mark, other than those referred to in Arti-
cle 124, for which no court has jurisdiction under Article 122(1) and paragraph 
1 of this Article may be heard before the courts of the Member State in which 
the Office has its seat.

Article 135
Obligation of the national court

A national court which is dealing with an action relating to an EU trade mark, 
other than the action referred to in Article 124, shall treat the EU trade mark 
as valid.

The EUTM Regulation 111

CHAPTER XI 
EFFECTS ON THE LAWS OF THE MEMBER STATES

SECTION 1 
Civil actions on the basis of more than one trade mark

Article 136
Simultaneous and successive civil actions on the basis of EU trade marks 
and national trade marks

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

EUTMR 
Art. 124, 
125

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

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

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

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

Paragraphs 1, 2 and 3 shall not apply in respect of provisional, including 

4. 
protective, measures.

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SECTION 2 
Application of national laws for the purpose of prohibiting the 
use of EU trade marks

Article 137
Prohibition of use of EU trade marks

EUTMR 
Art. 16

1. 
This Regulation shall, unless otherwise provided for, not affect the right 
existing under the laws of the Member States to invoke claims for infringement 
of earlier rights within the meaning of Article 8 or Article 60(2) in relation to 
the use of a later EU trade mark. Claims for infringement of earlier rights within 
the meaning of Article 8(2) and (4) may, however, no longer be invoked if the 
proprietor of the earlier right may no longer apply for a declaration that the EU 
trade mark is invalid in accordance with Article 61(2).

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

Article 138
Prior rights applicable to particular localities

EUTMR 
Art. 8

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

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

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

The EUTM Regulation 113

SECTION 3 
Conversion into a national trade mark application

Article 139
Request for the application of national procedure

1. 
The applicant for or proprietor of an EU trade mark may request the con-
version of his EU trade mark application or EU trade mark into a national trade 
mark application:

to the extent that the EU trade mark application is refused, withdrawn, or 

(a) 
deemed to be withdrawn;

(b) 

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

2.  Conversion shall not take place:

EUTMR 
Art. 7, 8, 
18, 41, 
42, 47, 49, 
57-60, 64, 
140, 202 
EUTMIR 
Art. 22, 35 

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

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

The national trade mark application resulting from the conversion of an 
3. 
EU trade mark application or an EU trade mark shall enjoy in respect of the 
Member State concerned the date of filing or the date of priority of that appli-
cation or trade mark and, where appropriate, the seniority of a trade mark of 
that State claimed under Articles 39 or 40.

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

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

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EUTMIR 
Art. 22, 23 

6.  Where the EU trade mark application is refused by decision of the Office 
or  where  the  EU  trade  mark  ceases  to  have  effect  as  a  result  of  a  decision 
of  the  Office  or  of  an  EU  trade  mark  court,  the  request  for  conversion  shall 
be filed within three months of the date on which that decision acquired the 
authority of a final decision.

The effect referred to in Article 37 shall lapse if the request is not filed in 

7. 
due time.

Article 140
Submission, publication and transmission of the request for conversion

1.  A request for conversion shall be filed with the Office within the relevant 
period  pursuant  to  Article  139(4),  (5)  or  (6),  and  shall  include  an  indication 
of the grounds for conversion in accordance with Article 139(1)(a) or (b), the 
Member States in respect of which conversion is requested, and the goods and 
services subject to conversion. Where conversion is requested following a fail-
ure to renew the registration, the period of three months provided for in Article 
139(5) shall begin to run on the day following the last day on which the request 
for renewal can be presented pursuant to Article 53(3). The request for conver-
sion shall not be deemed to be filed until the conversion fee has been paid.

2.  Where the request for conversion relates to an EU trade mark application 
which has already been published or where the request for conversion relates 
to an EU trade mark, receipt of any such request shall be recorded in the Reg-
ister and the request for conversion shall be published.

3. 
The Office shall check whether the conversion requested fulfils the condi-
tions set out in this Regulation, in particular Article 139(1), (2), (4), (5) and (6), 
and paragraph 1 of this Article, together with the formal conditions specified 
in  the  implementing  act  adopted  pursuant  to  paragraph  6  of  this  Article.  If 
the conditions governing the request are not fulfilled, the Office shall notify 
the  applicant  of  the  deficiencies.  If  the  deficiencies  are  not  remedied  within 
a period to be specified by the Office, the Office shall reject the request for 
conversion. Where Article 139(2) applies, the Office shall reject the request for 
conversion as inadmissible only with respect to those Member States for which 
conversion is excluded under that provision. Where the conversion fee has not 
been paid within the relevant period of three months pursuant to Article 139(4), 
(5) or (6), the Office shall inform the applicant that the request for conversion 
is deemed not to have been filed.

If the Office or an EU trade mark court has refused the EU trade mark 
4. 
application or has declared the EU trade mark invalid on absolute grounds by 
reference  to  the  language  of  a  Member  State,  conversion  shall  be  excluded 

The EUTM Regulation 115

under Article 139(2) for all the Member States in which that language is one 
of the official languages. If the Office or an EU trade mark court has refused 
the  EU  trade  mark  application  or  has  declared  the  EU  trade  mark  invalid  on 
absolute grounds which are found to apply throughout the Union or on account 
of an earlier EU trade mark or other Union industrial property right, conversion 
shall be excluded under Article 139(2) for all Member States.

5.  Where the request for conversion complies with the requirements referred 
to in paragraph 3 of this Article, the Office shall transmit the request for con-
version and the data referred to in Article 111(2) to the central industrial prop-
erty offices of the Member States, including the Benelux Office for Intellectual 
Property,  for  which  the  request  has  been  found  admissible.  The  Office  shall 
inform the applicant of the date of transmission.

6. 

The Commission shall adopt implementing acts specifying:

(a) 
the details to be contained in a request for conversion of an EU trade mark 
application or a registered EU trade mark into a national trade mark application 
pursuant to paragraph 1;

the details which are to be contained in the publication of the request for 

(b) 
conversion pursuant to paragraph 2.

Those implementing acts shall be adopted in accordance with the examination 
procedure referred to in Article 207(2).

Article 141
Formal requirements for conversion

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

EUTMR 
Art. 139

2.  An EU trade mark application or an EU trade mark transmitted in accord-
ance with Article 140 shall not be subject to formal requirements of national 
law which are different from or additional to those provided for in this Regula-
tion or in acts adopted pursuant to this Regulation.

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

(a)  pay the national application fee;

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file a translation in one of the official languages of the State in question 

(b) 
of the request and of the documents accompanying it;

(c) 

indicate an address for service in the State in question;

(d)  supply a representation of the trade mark in the number of copies speci-
fied by the State in question.

CHAPTER XII 
THE OFFICE

SECTION 1 
General provisions

Article 142
Legal status

EUTMR 
Art. 2, 143, 
144, 157

1. 

The Office shall be an agency of the Union. It shall have legal personality.

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

3. 

The Office shall be represented by its Executive Director.

Article 143
Staff

EUTMR 
Art. 153, 
157, 158

The  Staff  Regulations,  the  Conditions  of  Employment  and  the  rules 
1. 
adopted by agreement between the institutions of the Union for giving effect 
to  those  Staff  Regulations  and  Conditions  of  Employment  shall  apply  to  the 
staff of the Office, without prejudice to the application of Article 166 of this 
Regulation to the members of the Boards of Appeal.

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

The EUTM Regulation 117

Article 144
Privileges and immunities

The Protocol on the Privileges and Immunities of the Union shall apply to the 
Office and its staff.

EUTMR 
Art. 142

Article 145
Liability

The contractual liability of the Office shall be governed by the law appli-

1. 
cable to the contract in question.

EUTMR 
Art. 142

The Court of Justice shall be competent to give judgment pursuant to any 

2. 
arbitration clause contained in a contract concluded by the Office.

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

The Court of Justice shall have jurisdiction in disputes relating to compen-

4. 
sation for the damage referred to in paragraph 3.

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

Article 146
Languages

The application for an EU trade mark shall be filed in one of the official 

1. 
languages of the Union.

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

2. 
Spanish.

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

If the application was filed in a language which is not one of the languages 
of the Office, the Office shall arrange to have the application, as described in 
Article 31(1), translated into the language indicated by the applicant.

EUTMR 
Art. 68, 
116, 206 
EUTMDR 
Art. 3, 5, 
10, 13, 15, 
16, 21, 50, 
65 
EUTMIR 
Art. 2, 4, 7, 
24-26 

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

The notice of opposition and an application for revocation or a declaration 

5. 
of invalidity shall be filed in one of the languages of the Office.

6.  Without prejudice to paragraph 5:

(a)  any  application  or  declaration  relating  to  an  EU  trade  mark  application 
may be filed in the language used for filing the application for that EU trade 
mark or in the second language indicated by the applicant in his application;

(b)  any application or declaration relating to a registered EU trade mark may 
be filed in one of the languages of the Office.

However, when the application is filed by using any form provided by the Office 
as referred to in Article 100(2), such forms may be used in any of the official 
languages of the Union, provided that the form is completed in one of the lan-
guages of the Office, as far as textual elements are concerned.

7. 
If the language chosen, in accordance with paragraph 5, for the notice of 
opposition or the application for revocation or invalidity is the language of the 
application for a trade mark or the second language indicated when the appli-
cation was filed, that language shall be the language of the proceedings.

If the language chosen, in accordance with paragraph 5, for the notice of oppo-
sition or the application for revocation or invalidity is neither the language of 
the application for a trade mark nor the second language indicated when the 
application  was  filed,  the  opposing  party  or  the  party  seeking  revocation  or 
invalidity shall be required to produce, at his own expense, a translation of his 
application either into the language of the application for a trade mark, pro-
vided that it is a language of the Office, or into the second language indicated 
when the application was filed. The translation shall be produced within one 
month of the expiry of the opposition period or of the date of filing an appli-
cation  for  revocation  or  a  declaration  of  invalidity.  The  language  into  which 
the  application  has  been  translated  shall  then  become  the  language  of  the 
proceedings.

The EUTM Regulation 119

8. 
Parties  to  opposition,  revocation,  invalidity  or  appeal  proceedings  may 
agree that a different official language of the Union is to be the language of 
the proceedings.

9.  Without prejudice to paragraphs 4 and 8, and unless provided otherwise, 
in written proceedings before the Office any party may use any language of the 
Office. If the language chosen is not the language of the proceedings, the party 
shall supply a translation into that language within one month of the date of 
the submission of the original document. Where the applicant for an EU trade 
mark is the sole party to proceedings before the Office and the language used 
for the filing of the application for the EU trade mark is not one of the lan-
guages of the Office, the translation may also be filed in the second language 
indicated by the applicant in his application.

10.  The Executive Director shall determine the manner in which translations 
are to be certified.

11.  The Commission shall adopt implementing acts specifying:

the extent to which supporting documents to be used in written proceed-
(a) 
ings before the Office may be filed in any language of the Union, and the need 
to supply a translation;

(b) 

the requisite standards of translations to be filed with the Office.

Those implementing acts shall be adopted in accordance with the examination 
procedure referred to Article 207(2).

Article 147
Publication and entries in the Register

1.  An application for an EU trade mark, as described in Article 31(1), and all 
other information the publication of which is prescribed by this Regulation or 
an act adopted pursuant to this Regulation, shall be published in all the official 
languages of the Union.

EUTMR 
Art. 111, 
116, 146 
EUTMIR 
Art. 26 

2.  All entries in the Register shall be made in all the official languages of the 
Union.

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

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EUTMR 
Art. 146, 
147

EUTMR 
Art. 111-
114, 116, 
153

Article 148
Translation services

The translation services required for the functioning of the Office shall be pro-
vided by the Translation Centre for the Bodies of the European Union.

Article 149
Transparency

Regulation  (EC)  No  1049/2001  of  the  European  Parliament  and  of  the 

1. 
Council (16) shall apply to documents held by the Office.

The Management Board shall adopt detailed rules for applying Regulation 

2. 
(EC) No 1049/2001.

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

The processing of personal data by the Office shall be subject to Regula-

4. 
tion (EC) No 45/2001 of the European Parliament and of the Council (17).

Article 150
Security rules on the protection of classified and sensitive non-classified 
information

EUTMR 
Art. 113, 
114, 149

The  Office  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 Commission Decisions 
(EU,  Euratom)  2015/443  (18)  and  2015/444  (19).  The  security  principles  shall 
cover, inter alia, provisions for the exchange, processing and storage of such 
information.

(16) Regulation  (EC)  No  1049/2001  of  the  European  Parliament  and  of  the  Council  of  30  May  2001 
regarding  public  access  to  European  Parliament,  Council  and  Commission  documents  (OJ  L  145, 
31.5.2001, p. 43).

(17) Regulation (EC) No 45/2001 of the European Parliament and of the Council of 18 December 2000 
on the protection of individuals with regard to the processing of personal data by the Community 
institutions and bodies and on the free movement of such data (OJ L 8, 12.1.2001, p. 1).

(18) Commission Decision (EU, Euratom) 2015/443 of 13 March 2015 on Security in the Commission (OJ 

L 72, 17.3.2015, p. 41).

(19) Commission Decision (EU, Euratom) 2015/444 of 13 March 2015 on the security rules for protecting 

EU classified information (OJ L 72, 17.3.2015, p. 53).

The EUTM Regulation 121

EUTMR 
Art. 157, 
170

SECTION 2 
Tasks of the office and cooperation to promote convergence

Article 151
Tasks of the Office

1. 

The Office shall have the following tasks:

(a)  administration and promotion of the EU trade mark system established in 
this Regulation;

(b)  administration  and  promotion  of  the  European  Union  design  system 
established in Council Regulation (EC) No 6/2002 (20);

(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 Office for Intellectual Property;

the  tasks  referred  to  in  Regulation  (EU)  No  386/2012  of  the  European 

(d) 
Parliament and of the Council (21);

the  tasks  conferred  on  it  under  Directive  2012/28/EU  of  the  European 

(e) 
Parliament and of the Council (22).

2. 
The Office shall cooperate with institutions, authorities, bodies, industrial 
property offices, international and non- governmental organisations in relation 
to the tasks conferred on it in paragraph 1.

The Office may provide voluntary mediation services for the purpose of 

3. 
assisting parties in reaching a friendly settlement.

(20) Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ L 3, 5.1.2002, 

p. 1).

(21) Regulation (EU) No 386/2012 of the European Parliament and of the Council of 19 April 2012 on 
entrusting the Office for Harmonization in the Internal Market (Trade Marks and Designs) with tasks 
related to the enforcement of intellectual property rights, including the assembling of public and 
private-sector representatives as a European Observatory on Infringements of Intellectual Property 
Rights (OJ L 129, 16.5.2012, p. 1).

(22) Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain 

permitted uses of orphan works (OJ L 299, 27.10.2012, p. 5).

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Article 152
Cooperation to promote convergence of practices and tools

EUTMR 
Art. 153, 
157, 172, 
210 
EUTMIR 
Art. 20 

1. 
The  Office  and  the  central  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. Without prejudice to paragraph 3, this cooperation shall in 
particular cover the following areas of activity:

(a) 

the development of common examination standards;

the creation of common or connected databases and portals for Union-

(b) 
wide consultation, search and classification purposes;

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

(d) 
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, 

(e) 
including mutual support to helpdesks and information centres;

the exchange of technical expertise and assistance in relation to the areas 

(f) 
referred to in points (a) to (e).

2.  On  the  basis  of  a  proposal  by  the  Executive  Director,  the  Management 
Board  shall  define  and  coordinate  projects  of  interest  to  the  Union  and  the 
Member States with regard to the areas referred to in paragraphs 1 and 6, and 
shall invite the central industrial property offices of the Member States and the 
Benelux Office for Intellectual Property to participate in those projects.

The  project  definition  shall  contain  the  specific  obligations  and  responsibili-
ties of each participating industrial property office of the Member States, the 
Benelux Office for Intellectual Property and the Office. The Office shall consult 
with user representatives in particular in the phases of definition of the pro-
jects and evaluation of their results.

3. 
The central industrial property offices of the Member States and the Ben-
elux Office for Intellectual Property may opt out of, restrict or temporarily sus-
pend their cooperation in the projects referred to in the first subparagraph of 
paragraph 2.

The EUTM Regulation 123

When  making  use  of  the  possibilities  provided  for  in  the  first  subparagraph, 
the central industrial property offices of the Member States and the Benelux 
Office for Intellectual Property shall provide the Office with a written state-
ment explaining the reasons for their decision.

4.  Once  having  committed  to  participate  in  certain  projects,  the  central 
industrial  property  offices  of  the  Member  States  and  the  Benelux  Office  for 
Intellectual Property shall, without prejudice to paragraph 3, participate effec-
tively in the projects referred to in paragraph 2 with a view to ensuring that 
they are developed, function, are interoperable and kept up to date.

5. 
The  Office  shall  provide  financial  support  to  the  projects  referred  to  in 
paragraph 2 to the extent that is necessary in order to ensure, for the purposes 
of  paragraph  4,  the  effective  participation  of  the  central  industrial  property 
offices of the Member States and the Benelux Office for Intellectual Property in 
those projects. That financial support may take the form of grants and in-kind 
contributions. The total amount of funding shall not exceed 15 % of the yearly 
revenue of the Office. The beneficiaries of grants shall be the central 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 Office and with the principles of grant 
procedures contained in Regulation (EU, Euratom) No 966/2012 of the Euro-
pean Parliament and of the Council (23) and in Commission Delegated Regula-
tion (EU) No 1268/2012 (24).

6. 
The Office and the relevant competent authorities of the Member States 
shall  cooperate  with  each  other  on  a  voluntary  basis  to  promote  the  raising 
of awareness concerning the trade mark system and the fight against coun-
terfeiting. Such cooperation shall include projects aiming, in particular, at the 
implementation of established standards and practices as well as at organising 
education and training activities. The financial support for those projects shall 
be part of the total amount of funding referred to in paragraph 5. Paragraphs 
2 to 5 shall apply mutatis mutandis.

(23) Regulation (EU, 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 (OJ L 298, 26.10.2012, p. 1).

(24) Commission Delegated Regulation (EU) No 1268/2012 of 29 October 2012 on the rules of applica-
tion of Regulation (EU, Euratom) No 966/2012 of the European Parliament and of the Council on the 
financial rules applicable to the general budget of the Union (OJ L 362, 31.12.2012, p. 1).

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SECTION 3 
Management Board

Article 153
Functions of the Management Board

1.  Without prejudice to the functions attributed to the Budget Committee in 
Section 6, the Management Board shall have the following functions:

(a)  on the basis of a draft submitted by the Executive Director in accordance 
with Article 157(4)(c), adopting the annual work programme of the Office for 
the coming year, taking into account the opinion of the Commission, and for-
warding the adopted annual work programme to the European Parliament, to 
the Council and to the Commission;

(b)  on  the  basis  of  a  draft  submitted  by  the  Executive  Director  in  accord-
ance with Article 157(4)(e) and taking into account the opinion of the Commis-
sion, adopting a multiannual strategic programme for the Office, including the 
Office’s strategy for international cooperation, following an exchange of views 
between the Executive Director and the relevant committee in the European 
Parliament, and forwarding the adopted multiannual strategic programme to 
the European Parliament, to the Council and to the Commission;

(c)  on the basis of a draft submitted by the Executive Director in accordance 
with Article 157(4)(g), adopting the annual report and forwarding the adopted 
annual report to the European Parliament, to the Council, to the Commission 
and to the Court of Auditors;

(d)  on the basis of a draft submitted by the Executive Director in accordance 
with Article 157(4)(h), adopting the multiannual staff policy plan;

(e)  exercising the powers conferred on it under Article 152(2);

(f)  exercising the powers conferred on it under Article 172(5);

(g)  adopting rules on the prevention and management of conflicts of interest 
in the Office;

(h) 
in accordance with paragraph 2, exercising, with respect to the staff of 
the  Office,  the  powers  conferred  by  the  Staff  Regulations  on  the  Appointing 
Authority and by the Conditions of Employment on the Authority Empowered to 
Conclude Contracts of Employment (‘the appointing authority powers’);

The EUTM Regulation 125

(i) 
adopting appropriate implementing rules to give effect to the Staff Regu-
lations and the Conditions of Employment in accordance with Article 110 of the 
Staff Regulations;

(j)  drawing up the list of candidates provided for in Article 158(2);

(k)  ensuring adequate follow-up to the findings and recommendations stem-
ming from the internal or external audit reports and evaluations referred to in 
Article 210, as well as from investigations of the European Anti-fraud Office 
(OLAF);

(l)  being consulted before adoption of the guidelines for examination in the 
Office and in the other cases provided for in this Regulation;

(m)  providing opinions and requests for information to the Executive Director 
and to the Commission where it considers it necessary.

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

Article 154
Composition of the Management Board

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

The members of the Management Board may, subject to its rules of pro-

2. 
cedure, be assisted by advisers or experts.

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Article 155
Chairperson of the Management Board

1. 
The Management Board shall elect a chairperson and a deputy chairper-
son 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 156
Meetings

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

The Executive Director shall take part in the deliberations, unless the Man-

2. 
agement Board decides otherwise.

3. 
The  Management  Board  shall  hold  an  ordinary  meeting  at  least  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 153(1)(a) and (b), Article 155(1) and Article 158(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 Office.

The EUTM Regulation 127

SECTION 4 
Executive Director

Article 157
Functions of the Executive Director

The  Office  shall  be  managed  by  the  Executive  Director.  The  Executive 

1. 
Director shall be accountable to the Management Board.

EUTMDR 
Art. 37, 45

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 his duties and shall neither seek nor take instructions 
from a government or from any other body.

3. 

The Executive Director shall be the legal representative of the Office.

The  Executive  Director  shall  have  in  particular  the  following  functions, 

4. 
which may be delegated:

(a) 
taking all necessary steps, including the adoption of internal administra-
tive instructions and the publication of notices, to ensure the functioning of the 
Office;

(b) 

implementing the decisions adopted by the Management Board;

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

(d)  submitting  to  the  Management  Board  proposals  pursuant  to  Article 
152(2);

(e)  preparing a draft multiannual strategic programme, including the Office’s 
strategy  for  international  cooperation,  and  submitting  it  to  the  Management 
Board  after  consultation  of  the  Commission  and  following  an  exchange  of 
views with the relevant committee in the European Parliament;

(f) 
implementing the annual work programme and the multiannual strategic 
programme and reporting to the Management Board on their implementation;

(g)  preparing the annual report on the Office’s activities and presenting it to 
the Management Board for approval;

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(h)  preparing a draft multiannual staff policy plan and submitting it to the 
Management Board after consultation of the Commission;

(i) 
preparing an action plan following-up on the conclusions of the internal or 
external audit reports and evaluations, as well as following up on the investiga-
tions of the OLAF, and reporting on progress twice a year to the Commission 
and to the Management Board;

(j)  protecting the financial interests of the Union by the application of pre-
ventive  measures  against  fraud,  corruption  and  any  other  illegal  activities, 
by effective checks and, if irregularities are detected, by recovering amounts 
wrongly paid and, where appropriate, by imposing effective, proportionate and 
dissuasive administrative and financial penalties;

(k)  preparing  an  anti-fraud  strategy  for  the  Office  and  presenting  it  to  the 
Budget Committee for approval;

(l) 
in order to ensure uniform application of the Regulation, referring, where 
appropriate, to the enlarged Board of Appeal (‘the Grand Board’) questions on 
a point of law, in particular if the Boards of Appeal have issued diverging deci-
sions on the point;

(m)  drawing up estimates of the revenue and expenditure of the Office and 
implementing the budget;

(n)  exercising the powers entrusted to him in respect of staff by the Manage-
ment Board under Article 153(1)(h);

(o)  exercising the powers conferred on him under Articles 31(3), 34(5), 35(3), 
94(2), 97(5), Articles 98, 100, 101, Articles 111(4), 112(3), 114(5), Articles 115, 
116, Articles 120(4), 146(10), Article 178, Articles 179(1) and 180(2), and Arti-
cle 181 in accordance with the criteria set out in this Regulation and in the acts 
adopted pursuant to this Regulation.

5. 
The  Executive  Director  shall  be  assisted  by  one  or  more  Deputy  Execu-
tive  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.

The EUTM Regulation 129

Article 158
Appointment and removal of the Executive Director and extension of term 
of office

The  Executive  Director  shall  be  engaged  as  a  temporary  agent  of  the 

1. 
Office under Article 2(a) of the Conditions of Employment.

EUTMR 
Art. 153, 
156, 157

2. 
The Executive Director shall be appointed by the Council by simple major-
ity, from a list of candidates proposed by the Management Board, following an 
open and transparent selection procedure. Before being appointed, the candi-
date selected by the Management Board may be invited to make a statement 
before  any  competent  European  Parliament  committee  and  to  answer  ques-
tions put by its members. For the purpose of concluding the contract with the 
Executive Director, the Office shall be represented by the chairperson of the 
Management Board.

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

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

4. 
The Council, taking into account the assessment referred to in paragraph 
3, may extend the term of office of the Executive Director once and for no more 
than five years.

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 his 
overall term of office.

The  Deputy  Executive  Director  or  Deputy  Executive  Directors  shall  be 
6. 
appointed or removed from office as provided for in paragraph 2, after consul-
tation 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 and for no more than five years by the Council, after 
consultation of the Executive Director.

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EUTMR 
Art. 160-
165 
EUTMIR 
Art. 27 

SECTION 5 
Implementation of procedures 

Article 159
Competence

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

(a)  examiners;

(b)  Opposition Divisions;

(c)  a department in charge of the Register;

(d)  Cancellation Divisions;

(e)  Boards of Appeal;

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

Article 160
Examiners

An examiner shall be responsible for taking decisions on behalf of the Office 
in relation to an application for registration of an EU trade mark, including the 
matters referred to in Articles 41, 42, 76 and 85, except in so far as an Opposi-
tion Division is responsible.

Article 161
Opposition Divisions

EUTMR 
Art. 47 
EUTMDR 
Art. 5-10 
EUTMIR 
Art. 27 

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

2. 
The decisions of the Opposition Divisions shall be taken by three-member 
groups.  At  least  one  member  shall  be  legally  qualified.  Decisions  relating  to 
costs or to procedures shall be taken by a single member.

The Commission shall adopt implementing acts specifying the exact types of 
decisions that are to be taken by a single member. Those implementing acts 
shall be adopted in accordance with the examination procedure referred to in 
Article 207(2).

The EUTM Regulation 131

Article 162
Department in charge of the Register

The Department in charge of the Register shall be responsible for taking 

1. 
decisions in respect of entries in the Register.

EUTMR 
Art. 111, 
147, 185

It shall also be responsible for keeping the list of professional representa-

2. 
tives referred to in Article 120(2).

3. 

The decisions of the Department shall be taken by a single member.

Article 163
Cancellation Divisions

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

(a)  applications for the revocation or a declaration of invalidity of an EU trade 
mark;

requests for the assignment of an EU trade mark as provided for in Article 

(b) 
21.

The decisions of the Cancellation Divisions shall be taken by three-mem-
2. 
ber groups. At least one member shall be legally qualified. Decisions relating 
to costs or to procedures as specified in the acts adopted pursuant to Article 
161(2) shall be taken by a single member.

EUTMR 
Art. 63, 64 
EUTMDR 
Art. 15, 
17-19 
EUTMIR 
Art. 27 

Article 164
General Competence

Decisions required under this Regulation which do not fall within the compe-
tence  of  an  examiner,  an  Opposition  Division,  a  Cancellation  Division  or  the 
Department  in  charge  of  the  Register,  shall  be  taken  by  any  official  or  unit 
appointed by the Executive Director for that purpose.

Article 165
Boards of Appeal

The Boards of Appeal shall be responsible for deciding on appeals from 

1. 
decisions taken pursuant to Articles 160 to 164.

2. 
The decisions of the Boards of Appeal shall be taken by three members, at 
least two of whom are legally qualified. In certain specific cases, decisions shall 

EUTMR 
Art. 66 
EUTMDR 
Art. 32, 35, 
36, 39, 40, 
45

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be taken by the Grand Board chaired by the President of the Boards of Appeal 
or by a single member, who shall be legally qualified.

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

(a)  by the authority of the Boards of Appeal referred to in Article 166(4)(a); or

(b)  by the Board handling the case.

4. 
The  Grand  Board  shall  also  be  responsible  for  giving  reasoned  opinions 
on questions of law referred to it by the Executive Director pursuant to Article 
157(4)(l).

5. 
To  determine  which  specific  cases  fall  under  the  authority  of  a  single 
member, account should be taken of the lack of difficulty of the legal or factual 
matters raised, the limited importance of the individual case or the absence of 
other specific circumstances. The decision to confer a case on one member in 
the cases referred to shall be adopted by the Board handling the case.

Article 166
Independence of the members of the Boards of Appeal

EUTMR 
Art. 143, 
159, 169 
EUTMDR 
Art. 40, 47

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 158 
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 insti-
tution which appointed them, takes a decision to this effect.

The  term  of  office  of  the  President  of  the  Boards  of  Appeal  may  be 
2. 
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.

The term of office of the chairpersons of the Boards may be extended for 
3. 
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, and after consulting the President of the Boards of 
Appeal.

The EUTM Regulation 133

The President of the Boards of Appeal shall have the following managerial 

4. 
and organisational functions:

(a)  chairing the Presidium of the Boards of Appeal (‘the Presidium’), responsi-
ble for laying down the rules and organising the work of the Boards;

(b)  ensuring the implementation of the decisions of the Presidium;

(c)  allocating cases to a Board on the basis of objective criteria determined 
by the Presidium;

forwarding  to  the  Executive  Director  the  Boards’  expenditure  require-

(d) 
ments, with a view to drawing up the expenditure estimates.

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

5. 
The members of the Boards of Appeal shall be appointed by the Manage-
ment 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 dur-
ing the new term of office after a prior positive evaluation of their performance 
by the Management Board, and after consulting the President of the Boards of 
Appeal.

The members of the Boards of Appeal shall not be removed from office 
6. 
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 rec-
ommendation of the President of the Boards of Appeal, and 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 the Grand Board on appeals or opinions on questions 
of law referred to it by the Executive Director pursuant to Article 165 shall be 
binding on the decision-making instances of the Office listed in Article 159.

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 in charge of the Register or Cancellation Divisions.

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Article 167
Presidium of the Boards of Appeal and Grand Board

EUTMDR 
Art. 45, 46

1. 
The Presidium shall comprise the President of the Boards of Appeal, who 
shall chair it, the chairmen of the Boards and Board members elected for each 
calendar year by and from among all the members of the Boards other than 
the  President  of  the  Boards  of  Appeal  and  the  chairmen  of  the  Boards.  The 
number of Board members so elected shall constitute a quarter of the number 
of Board members, other than the President of the Boards of Appeal and the 
chairmen of the Boards, and that number shall be rounded up if necessary.

2. 
The Grand Board referred to in Article 165(2) shall comprise nine mem-
bers,  including  the  President  of  the  Boards  of  Appeal,  the  chairmen  of  the 
Boards, the rapporteur designated prior to referral to the Grand Board, if appli-
cable, and members drawn in rotation from a list comprising the names of all 
members of the Boards of Appeal other than the President of the Boards of 
Appeal and the chairmen of the Boards.

Article 168
Delegation of powers

EUTMR 
Art. 166, 
167, 208

The  Commission  is  empowered  to  adopt  delegated  acts  in  accordance  with 
Article 208 specifying the details concerning the organisation of the Boards of 
Appeal, including the setting up and the role of the Presidium, the composition 
of the Grand Board and the rules on referrals to it, and the conditions under 
which decisions are to be taken by a single member in accordance with Article 
165(2) and (5).

Article 169
Exclusion and objection

EUTMR 
Art. 114, 
159-161, 
163, 165 
EUTMDR 
Art. 43, 44, 
46, 52

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

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

The EUTM Regulation 135

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

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

Article 170
Mediation centre

For the purposes of Article 151(3), the Office may establish a Mediation 

1. 
Centre (‘the Centre’).

EUTMDR 
Art. 71

2.  Any natural or legal person may use the Centre’s services on a voluntary 
basis with the aim of reaching a friendly settlement of disputes, based on this 
Regulation or Regulation (EC) No 6/2002, by mutual agreement.

3. 
The parties shall have recourse to mediation by means of a joint request. 
The  request  shall  not  be  deemed  to  have  been  filed  until  the  corresponding 
charge has been paid. The Executive Director shall fix the amount to be charged 
in accordance with Article 178(1).

4. 
In  the  case  of  disputes  subject  to  the  proceedings  pending  before  the 
Opposition Divisions, Cancellation Divisions or before the Boards of Appeal of 
the Office a joint request for mediation may be presented at any time after the 
lodging of a notice of opposition, an application for revocation or an applica-
tion for a declaration of invalidity or a notice of appeal against decisions of the 
Opposition or Cancellation Divisions.

5. 
The  proceedings  in  question  shall  be  suspended  and  the  time  periods, 
other  than  the  time  periods  for  the  payment  of  the  applicable  fee,  shall  be 
interrupted as from the date of the filing of a joint request for mediation. The 
time  periods  shall  continue  as  from  the  day  on  which  the  proceedings  are 
resumed.

6. 
The parties shall be invited to jointly appoint, from the list referred to in 
paragraph 12, a mediator who has declared that he has a command of the lan-
guage of the mediation in question. Where the parties do not appoint a media-

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tor within 20 days of the invitation to do so, the mediation shall be deemed to 
have failed.

The  parties  shall  agree  together  with  the  mediator  on  the  detailed 

7. 
arrangements for the mediation in a mediation agreement.

The  mediator  shall  conclude  the  mediation  proceedings  as  soon  as  the 
8. 
parties  reach  a  settlement  agreement,  or  one  of  the  parties  declares  that  it 
wishes to end the mediation or the mediator establishes that the parties have 
failed to reach such an agreement.

The mediator shall inform the parties as well as the relevant instance of 

9. 
the Office as soon as the mediation proceedings have been concluded.

10.  The  discussions  and  negotiations  conducted  within  the  framework  of 
mediation  shall  be  confidential  for  all  persons  involved  in  the  mediation,  in 
particular for the mediator, the parties and their representatives. All documents 
and information submitted during the mediation shall be kept separately from, 
and shall not be part of, the file of any other proceedings before the Office.

11.  The mediation shall be conducted in one of the official languages of the 
Union to be agreed upon by the parties. Where the mediation relates to dis-
putes pending before the Office, the mediation shall be conducted in the lan-
guage of the Office proceedings, unless otherwise agreed by the parties.

12.  The Office shall establish a list of mediators who shall support parties in 
resolving disputes. The mediators shall be independent and possess relevant 
skills and experience. The list may include mediators who are employed by the 
Office, and mediators who are not so employed.

13.  Mediators shall be impartial in the exercise of their duties and shall declare 
any real or perceived conflict of interest upon their designation. Members of 
the decision-making instances of the Office listed in Article 159 shall not take 
part in mediation concerning a case in which they have:

(a)  had any prior involvement in the proceedings referred to mediation;

(b)  any personal interest in those proceedings; or

(c)  been previously involved as a representative of one of the parties.

14.  Mediators shall not take part as members of the decision-making instances 
of the Office listed in Article 159 in proceedings resumed as a consequence of 
a mediation failure.

The EUTM Regulation 137

15.  The Office may cooperate with other recognised national or international 
bodies dealing with mediation.

SECTION 6 
Budget and financial control

Article 171
Budget Committee

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

1. 
Section.

2.  Articles 154 and 155, Article 156(1) to (4), and (5), in so far as it relates to 
the election of the chairperson and deputy chairperson, and Article 156(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 173(3) and Article 177. In both cases each member shall have one 
vote.

Article 172
Budget

1. 
Estimates of all the Office’s revenue and expenditure shall be prepared 
for each financial year and shall be shown in the Office’s budget. Each financial 
year shall correspond to the calendar year.

EUTMR 
Art. 157, 
171, 173

2. 

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

Revenue shall comprise, without prejudice to other types of income, total 
3. 
fees  payable  under  Annex  I  to  this  Regulation,  total  fees  as  provided  for  in 
Regulation (EC) No 6/2002, total fees payable, under the Madrid Protocol, for 
an international registration designating the Union, and other payments made 
to  Contracting  Parties  to  the  Madrid  Protocol,  total  fees  payable,  under  the 
Geneva  Act  referred  to  in  Article  106c  of  Regulation  (EC)  No  6/2002,  for  an 
international registration designating the Union and other payments made to 
Contracting Parties to the Geneva Act, and, to the extent necessary, a subsidy 
entered against a specific heading of the Commission section of the general 
budget of the Union.

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4. 
Every year the Office shall offset the costs incurred by the central indus-
trial property offices of the Member States, by the Benelux Office for Intellec-
tual Property and by any other relevant authority to be nominated by a Member 
State,  as  the  result  of  the  specific  tasks  which  they  carry  out  as  functional 
parts of the EU trade mark system in the context of the following services and 
procedures:

(a)  opposition and invalidity proceedings before the central industrial prop-
erty offices of the Member States and the Benelux Office for Intellectual Prop-
erty involving EU trade marks;

(b)  provision of information on the functioning of the EU trade mark system 
through helpdesks and information centres;

(c)  enforcement of EU trade marks, including action taken pursuant to Article 
9(4).

5. 
The overall offsetting of the costs identified in paragraph 4 shall corre-
spond to 5 % of the yearly revenue of the Office. Without prejudice to the third 
subparagraph  of  this  paragraph,  on  a  proposal  by  the  Office  and  after  hav-
ing consulted the Budget Committee, the Management Board shall determine 
the distribution key on the basis of the following fair, equitable and relevant 
indicators:

the annual number of EU trade mark applications originating from appli-

(a) 
cants in each Member State;

the annual number of national trade mark applications in each Member 

(b) 
State;

the  annual  number  of  oppositions  and  applications  for  a  declaration  of 

(c) 
invalidity submitted by proprietors of EU trade marks in each Member State;

the  annual  number  of  cases  brought  before  the  EU  trade  mark  courts 

(d) 
designated by each Member State in accordance with Article 123.

For the purpose of substantiating the costs referred to in paragraph 4, Member 
States  shall  submit  to  the  Office  by  31  March  of  each  year,  statistical  data 
demonstrating the figures referred to in points (a) to (d) of the first subpara-
graph of this paragraph for the preceding year, which shall be included in the 
proposal to be made to the Management Board.

The EUTM Regulation 139

On grounds of equity, the costs incurred by the bodies referred to in paragraph 
4 in each Member State shall be deemed to correspond to at least 2 % of the 
total offsetting provided for under this paragraph.

6. 
The obligation by the Office to offset the costs referred to in paragraph 
4 and incurred in a given year shall only apply to the extent that no budgetary 
deficit occurs in that year.

7. 
In the event of a budgetary surplus, and without prejudice to paragraph 
10, on a proposal by the Office and after having consulted the Budget Commit-
tee, the Management Board may increase the percentage laid down in para-
graph 5 to a maximum of 10 % of the yearly revenue of the Office.

8.  Without prejudice to paragraphs 4 to 7 and paragraph 10 of this Article 
and  to  Articles  151  and  152,  where  a  substantive  surplus  is  generated  over 
five consecutive years, the Budget Committee, upon a proposal from the Office 
and in accordance with the annual work programme and multiannual strategic 
programme referred to in Article 153(1)(a) and (b), shall decide by a two-thirds 
majority on the transfer to the budget of the Union of a surplus generated from 
23 March 2016.

9. 
The  Office  shall  prepare  on  a  biannual  basis  a  report  for  the  European 
Parliament, the Council and the Commission on its financial situation, including 
on the financial operations performed under Article 152(5) and (6), and para-
graphs 5 and 7 of this Article. On the basis of that report, the Commission shall 
review the financial situation of the Office.

10.  The Office shall provide for a reserve fund covering one year of its opera-
tional expenditure to ensure the continuity of its operations and the execution 
of its tasks.

Article 173
Preparation of the budget

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

EUTMR 
Art. 157, 
171, 172, 
177

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

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

Article 174
Audit and control

EUTMR 
Art. 157, 
171

1.  An  internal  audit  function  shall  be  set  up  within  the  Office,  to  be  per-
formed in compliance with the relevant inter  national standards. The internal 
auditor,  appointed  by  the  Executive  Director,  shall  be  responsible  to  him  for 
verifying the proper operation of budget implementation systems and proce-
dures of the Office.

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

The responsibility for putting in place internal control systems and proce-

3. 
dures suitable for carrying out his tasks shall lie with the authorising officer.

Article 175
Combating fraud

EUTMR 
Art. 153, 
157, 171

1. 
In order to facilitate combating fraud, corruption and other unlawful activ-
ities under Regulation (EU, Euratom) No 883/2013 of the European Parliament 
and of the Council (25), the Office shall accede to the Inter-institutional Agree-
ment of 25 May 1999 concerning internal investigations by OLAF, and adopt 
the appropriate provisions applicable to all the employees of the Office using 
the template set out in the Annex to that Agreement.

2. 
The Court of Auditors shall have the power of audit, on the basis of docu-
ments and on the spot, over all grant beneficiaries, contractors and subcon-
tractors who have received Union funds from the Office.

3.  OLAF  may  carry  out  investigations,  including  on-the-spot  checks  and 
inspections,  in  accordance  with  the  provisions  and  procedures  laid  down  in 
Regulation (EU, Euratom) No 883/2013 and Council Regulation (Euratom, EC) 

(25) Regulation (EU, Euratom) No 883/2013 of the European Parliament and of the Council of 11 Sep-
tember  2013  concerning  investigations  conducted  by  the  European  Anti-Fraud  Office  (OLAF)  and 
repealing Regulation (EC) No 1073/1999 of the European Parliament and of the Council and Council 
Regulation (Euratom) No 1074/1999 (OJ L 248, 18.9.2013, p. 1).

The EUTM Regulation 141

No 2185/96 (26) with a view to establishing whether there has been fraud, cor-
ruption or any other illegal activity affecting the financial interests of the Union 
in connection with a grant or a contract funded by the Office.

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 Office shall contain provisions expressly empower-
ing the Court of Auditors and OLAF to conduct such audits and investigations, 
in accordance with their respective competences.

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

Article 176
Auditing of accounts

1.  Not later than 31 March in each year the Executive Director shall transmit 
to the Commission, the European Parliament, the Budget Committee and the 
Court of Auditors accounts of the Office’s total revenue and expenditure for the 
preceding financial year. The Court of Auditors shall examine them in accord-
ance with Article 287 TFEU.

EUTMR 
Art. 157, 
171

The Budget Committee shall give a discharge to the Executive Director in 

2. 
respect of the implementation of the budget.

Article 177
Financial provisions

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

EUTMR 
Art. 152, 
171, 173

(26) Council Regulation (Euratom, EC) No 2185/96 of 11 November 1996 concerning on-the-spot checks 
and inspections carried out by the Commission in order to protect the European Communities’ finan-
cial interests against fraud and other irregularities (OJ L 292, 15.11.1996, p. 2).

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Article 178
Fees and charges and due date

EUTMR 
Art. 157, 
171

1. 
The Executive Director shall lay down the amount to be charged for any 
services rendered by the Office other than those set out in Annex I, as well as 
the  amount  to  be  charged  for  the  European  Union  Trade  Marks  Bulletin,  the 
Official Journal of the Office and any other publications issued by the Office. 
The amounts of charges shall be set in euros and shall be published in the Offi-
cial Journal of the Office. The amount of each charge shall not exceed what is 
necessary to cover the costs of the specific service rendered by the Office.

2. 
Fees and charges in respect of which the due date is not specified in this 
Regulation shall be due on the date of receipt of the request for the service for 
which the fee or the charge is incurred.

With the consent of the Budget Committee, the Executive Director may deter-
mine which of the services mentioned in the first subparagraph are not to be 
dependent upon the advance payment of the corresponding fees or charges.

Article 179
Payment of fees and charges

EUTMR 
Art. 157, 
178, 
180,181, 
Annex I

Fees and charges due to the Office shall be paid by payment or transfer 

1. 
to a bank account held by the Office.

With the consent of the Budget Committee, the Executive Director may estab-
lish which specific methods of payment other than those set out in the first 
subparagraph, in particular by means of deposits in current accounts held with 
the Office, may be used.

Determinations made pursuant to the second subparagraph shall be published 
in the Official Journal of the Office.

All payments, including by any other method of payment established pursuant 
to the second subparagraph, shall be made in euros.

2. 
Every payment shall indicate the name of the person making the payment 
and shall contain the necessary information to enable the Office to establish 
immediately the purpose of the payment. In particular, the following informa-
tion shall be provided:

(a)  when  the  application  fee  is  paid,  the  purpose  of  the  payment,  namely 
‘application fee’;

The EUTM Regulation 143

(b)  when  the  opposition  fee  is  paid,  the  file  number  of  the  application  and 
the name of the applicant for the EU trade mark against which opposition is 
entered, and the purpose of the payment, namely ‘opposition fee’;

(c)  when the revocation fee and the invalidity fee are paid, the registration 
number and the name of the proprietor of the EU trade mark against which the 
application  is  directed,  and  the  purpose  of  the  payment,  namely  ‘revocation 
fee’ or ‘invalidity fee’.

3. 
If the purpose of the payment referred to in paragraph 2 cannot immedi-
ately be established, the Office shall require the person making the payment 
to notify it in writing of this purpose within such period as it may specify. If the 
person does not comply  with this  request in  due  time,  the payment  shall be 
considered not to have been made. The amount which has been paid shall be 
refunded.

Article 180
Deemed date of payment

In  the  cases  referred  to  in  the  first  subparagraph  of  Article  179(1),  the 
1. 
date on which the payment shall be considered to have been made to the Office 
shall  be  the  date  on  which  the  amount  of  the  payment  or  of  the  transfer  is 
actually entered in a bank account held by the Office.

EUTMR 
Art. 157, 
178, 181, 
Annex I

2.  Where the methods of payment referred to in the second subparagraph of 
Article 179(1) may be used, the Executive Director shall establish the date on 
which such payments are to be considered to have been made.

3.  Where, under paragraphs 1 and 2, payment of a fee is not considered to 
have been made until after the expiry of the period in which it was due, it shall 
be considered that this period has been observed if evidence is provided to the 
Office that the persons who made the payment in a Member State, within the 
period within which the payment should have been made, duly gave an order 
to a banking establishment to transfer the amount of the payment, and paid 
a surcharge of 10 % of the relevant fee or fees, but not exceeding EUR 200. 
No surcharge shall be payable if the relevant order to the banking establish-
ment has been given not later than 10 days before the expiry of the period for 
payment.

4. 
The  Office  may  request  the  person  who  made  the  payment  to  produce 
evidence as to the date on which the order to the banking establishment as 
referred to in paragraph 3 was given and, where required, to pay the relevant 
surcharge  within  a  period  to  be  specified  by  it.  If  the  person  fails  to  comply 
with that request or if the evidence is insufficient, or if the required surcharge 

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is not paid in due time, the period for payment shall be considered not to have 
been observed.

Article 181
Insufficient payments and refund of insignificant amounts

EUTMR 
Art. 157, 
171, 178, 
179, 180, 
Annex I

1.  A  time  limit  for  payment  shall,  in  principle,  be  considered  to  have  been 
observed only if the full amount of the fee has been paid in due time. If the fee 
is not paid in full, the amount which has been paid shall be refunded after the 
period for payment has expired.

2. 
The Office may, however, in so far as is possible within the time remaining 
before the end of the period, give the person making the payment the oppor-
tunity to pay the amount lacking or, where this is considered justified, overlook 
any small amounts lacking, without prejudice to the rights of the person mak-
ing the payment.

3.  With  the  consent  of  the  Budget  Committee,  the  Executive  Director  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.

4.  Where an excessive sum is paid to cover a fee or a charge, the excess shall 
not be refunded if the amount is insignificant and the party concerned has not 
expressly requested a refund.

With the consent of the Budget Committee the Executive Director may deter-
mine the amount below which an excessive sum paid to cover a fee or a charge 
shall not be refunded.

Determinations pursuant to the second subparagraph shall be published in the 
Official Journal of the Office.

The EUTM Regulation 145

CHAPTER XIII 
INTERNATIONAL REGISTRATION OF MARKS

SECTION I 
General provisions

Article 182
Application of provisions

Unless otherwise specified in this chapter, this Regulation and the acts adopted 
pursuant to this Regulation shall apply to applications for international regis-
trations  under  the  Madrid  Protocol  (‘international  applications’),  based  on  an 
application for an EU trade mark or on an EU trade mark and to registrations of 
marks in the international register maintained by the International Bureau of 
the World Intellectual Property Organisation (‘international registrations’ and 
‘the International Bureau’, respectively) designating the Union.

SECTION 2 
International registration on the basis of applications for an 
EU trade mark and of EU trade marks

Article 183
Filing of an international application

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

EUTMR 
Art. 30, 
184

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

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Article 184
Form and contents of the international application

EUTMR 
Art. 206 
EUTMIR 
Art. 28, 31 

1. 
The  international  application  shall  be  filed  in  one  of  the  official  lan-
guages  of  the  Union,  using  a  form  provided  by  the  Office.  The  Office  shall 
inform the applicant filing the international application of the date on which 
the  documents  making  up  the  international  application  are  received  by  the 
Office. Unless otherwise specified by the applicant on form when he files the 
international application, the Office shall correspond with the applicant in the 
language of filing in a standard form.

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

3.  Where the international application is filed in a language other than one 
of the languages allowed under the Madrid Protocol for the filing of interna-
tional applications, the applicant may provide a translation of the list of goods 
or services and of any other textual elements forming part of the international 
application in the language in which the international application is to be sub-
mitted to the International Bureau pursuant to paragraph 2. If the application is 
not accompanied by such translation, the applicant shall authorise the Office to 
include that translation in the international application. Where the translation 
has not yet been established in the course of the registration procedure for the 
EU trade mark application on which the international application is based, the 
Office shall, without delay, arrange for the translation.

4. 
The filing of an international application shall be subject to the payment of 
a fee to the Office. Where the international registration is to be based on an EU 
trade mark once it is registered, the fee shall be due on the date of registration 
of the EU trade mark. The application shall be deemed not to have been filed 
until the required fee has been paid. Where the fee has not been paid, the Office 
shall inform the applicant accordingly. In the event of electronic filing, the Office 
may authorise the International Bureau to collect the fee on its behalf.

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

the  international  application  has  not  been  filed  using  the  form  referred 
(a) 
to  in  paragraph  1,  and  does  not  contain  all  the  indications  and  information 
required by that form;

The EUTM Regulation 147

(b) 
the list of goods and services contained in the international application is 
not covered by the list of goods and services appearing in the basic EU trade 
mark application or basic EU trade mark;

(c) 
the mark which is subject to the international application is not identical 
with the mark as it appears in the basic EU trade mark application or basic EU 
trade mark;

(d)  an indication in the international application as to the trade mark, other 
than a disclaimer or a colour claim, does not also appear in the basic EU trade 
mark application or basic EU trade mark;

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

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

6.  Where the applicant has failed to authorise the Office to include a trans-
lation as provided for in paragraph 3, or where it is otherwise unclear on which 
list of goods and services the international application is to be based, the Office 
shall invite the applicant to make the required indications within such period as 
it may specify.

7. 
If  the  deficiencies  referred  to  in  paragraph  5  are  not  remedied  or  the 
required indications referred to in paragraph 6 are not given within the period 
fixed by the Office, the Office shall refuse to forward the international applica-
tion to the International Bureau.

8. 
The Office shall forward the international application to the International 
Bureau along with the certification provided for under Article 3(1) of the Madrid 
Protocol as soon as the international application meets the requirements laid 
down in this Article, the implementing act adopted pursuant to paragraph 9 of 
this Article, and in Article 183 of this Regulation.

The Commission shall adopt implementing acts specifying the exact form, 
9. 
including  the  elements  thereof,  to  be  used  for  the  filing  of  an  international 
application pursuant to paragraph 1. Those implementing acts shall be adopted 
in accordance with the examination procedure referred to in Article 207(2).

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Article 185
Recordal in the files and in the Register

EUTMR 
Art. 111

1. 
The  date  and  number  of  an  international  registration  based  on  an  EU 
trade mark application shall be recorded in the files of that application. When 
the application results in an EU trade mark, the date and number of the inter-
national registration shall be entered in the Register.

The  date  and  number  of  an  international  registration  based  on  an  EU 

2. 
trade mark shall be entered in the Register.

Article 186
Notification of the invalidity of the basic application or registration

EUTMR 
Art. 46, 63, 
66, 128, 
183 
EUTMIR 
Art. 29 

1.  Within  a  period  of  five  years  of  the  date  of  the  international  registra-
tion, the Office shall notify the International Bureau of any facts and decisions 
affecting the validity of the EU trade mark application or the EU trade mark 
registration on which the international registration was based.

The Commission shall adopt implementing acts specifying the individual 
2. 
facts  and  decisions  subject  to  the  notification  obligation  in  accordance  with 
Article 6(3) of the Madrid Protocol as well as the relevant point in time of such 
notifications. Those implementing acts shall be adopted in accordance with the 
examination procedure referred to in Article 207(2) of this Regulation.

Article 187
Request for territorial extension subsequent to international registration

EUTMIR 
Art. 30, 31 

1.  A  request  for  territorial  extension  made  subsequent  to  an  international 
registration  pursuant  to  Article  3ter(2)  of  the  Madrid  Protocol  may  be  filed 
through the intermediary of the Office. The request shall be filed in the lan-
guage in which the international application was filed pursuant to Article 184 
of this Regulation. It shall include indications to substantiate the entitlement 
to make a designation in accordance with Article 2(1)(ii) and Article 3ter(2) of 
the Madrid Protocol. The Office shall inform the applicant requesting the ter-
ritorial extension of the date on which the request for territorial extension was 
received.

2. 
The  Commission  shall  adopt  implementing  acts  specifying  the  detailed 
requirements regarding the request for territorial extension pursuant to para-
graph 1 of this Article. Those implementing acts shall be adopted in accordance 
with the examination procedure referred to in Article 207(2).

The EUTM Regulation 149

3.  Where the request for territorial extension made subsequent to the inter-
national registration does not comply with the requirements set out in para-
graph  1  and  in  the  implementing  act  adopted  pursuant  to  paragraph  2,  the 
Office shall invite the applicant to remedy the deficiencies found within such 
time limit as it may specify. If the deficiencies are not remedied within the time 
limit fixed by the Office, the Office shall refuse to forward the request to the 
International Bureau. The Office shall not refuse to forward the request to the 
International Bureau before the applicant has had the opportunity to correct 
any deficiency detected in the request.

The Office shall forward the request for territorial extension made subse-
4. 
quent to the international registration to the International Bureau as soon as 
the requirements referred to in paragraph 3 are complied with.

Article 188
International fees

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

EUTMR 
Art. 184

SECTION 3 
International registrations designating the Union

Article 189
Effects of international registrations designating the Union

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

EUTMR 
Art. 9-17 
EUTMDR 
Art. 79

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

3. 
For the purposes of applying Article 11 of this Regulation, publication of 
the particulars of the international registration designating the Union pursu-
ant to Article 190(1) shall take the place of publication of an EU trade mark 
application, and publication pursuant to Article 190(2) shall take the place of 
publication of the registration of an EU trade mark.

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Article 190
Publication

EUTMR 
Art. 116

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

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

Article 191
Seniority claimed in an international application

1. 
The applicant for an international registration designating the Union may 
claim,  in  the  international  application,  the  seniority  of  an  earlier  trade  mark 
registered  in  a  Member  State,  including  a  trade  mark  registered  in  the  Ben-
elux countries, or registered under international arrangements having effect in 
a Member State, as provided for in Article 39.

The documentation, as specified in the implementing act adopted pursu-
2. 
ant to Article 39(6), in support of the seniority claim shall be submitted within 
three months of the date on which the International Bureau notifies the inter-
national registration to the Office. In this regard, Article 39(7) shall apply.

3.  Where  the  holder  of  the  international  registration  is  obliged  to  be  rep-
resented before the Office pursuant to Article 119(2), the communication as 
referred  to  in  paragraph  2  of  this  Article  shall  contain  the  appointment  of 
a representative within the meaning of Article 120(1).

4.  Where the Office finds that the seniority claim under paragraph 1 of this 
Article  does  not  comply  with  Article  39,  or  does  not  comply  with  the  other 
requirements laid down in this Article, it shall invite the applicant to remedy the 
deficiencies. If the requirements referred to in the first sentence are not satis-
fied within the time limit specified by the Office, the right of seniority in respect 
of that international registration shall be lost. If the deficiencies concern only 

The EUTM Regulation 151

some of the goods and services, the right of seniority shall be lost only in so far 
as those goods and services are concerned.

5. 
The  Office  shall  inform  the  International  Bureau  of  any  declaration  of 
a loss of the right of seniority pursuant to paragraph 4. It shall also inform the 
International Bureau of any withdrawal or restriction of the seniority claim.

6.  Article 39(5) shall apply, unless the right of seniority is declared lost pur-
suant to paragraph 4 of this Article.

Article 192
Seniority claimed before the Office

1. 
The holder of an international registration designating the Union may, as 
from the date of publication of the effects of such registration pursuant to Arti-
cle 190(2), claim at the Office the seniority of an earlier trade mark registered 
in a Member State, including a trade mark registered in the Benelux countries, 
or  registered  under  international  arrangements  having  effect  in  a  Member 
State, as provided for in Article 40.

EUTMDR 
Art. 79 
EUTMIR 
Art. 32 

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

3.  A seniority claim under paragraph 1 of this Article shall fulfil the require-
ments  referred  to  in  Article  40  and  shall  contain  information  to  enable  its 
examination against those requirements.

If the requirements governing the claiming of seniority referred to in para-
4. 
graph 3 and specified in the implementing act adopted pursuant to paragraph 
6 are not fulfilled, the Office shall invite the holder of the international regis-
tration to remedy the deficiencies. If the deficiencies are not remedied within 
a period to be specified by the Office, the Office shall reject the claim.

5.  Where the Office has accepted the seniority claim, or where a seniority 
claim has been withdrawn or cancelled by the Office, the Office shall inform 
the International Bureau accordingly.

6. 
The Commission shall adopt implementing acts specifying the details to 
be  contained  in  a  seniority  claim  under  paragraph  1  of  this  Article  and  the 
details of the information to be notified pursuant to paragraph 5 of this Article. 
Those implementing acts shall be adopted in accordance with the examination 
procedure referred to in Article 207(2).

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Article 193
Designation of goods and services and examination as to absolute 
grounds for refusal

EUTMR 
Art. 7 
EUTMIR 
Art. 33 

1. 
International registrations designating the Union shall be subject to exam-
ination  as  to  their  conformity  with  Article  33(2),  (3)  and  (4)  and  to  absolute 
grounds for refusal in the same way as applications for EU trade marks.

2.  Where an international registration designating the Union is found to be 
ineligible for protection pursuant to Article 33(4) or Article 42(1) of this Regula-
tion for all or any part of the goods and services for which it has been regis-
tered by the International Bureau, the Office shall issue an ex officio provisional 
notification of refusal to the Inter  national Bureau, in accordance with Article 
5(1) and (2) of the Madrid Protocol.

3.  Where the holder of an international registration is obliged to be repre-
sented before the Office pursuant to Article 119(2), the notification referred to 
in paragraph 2 of this Article shall contain an invitation to appoint a represen  
tative within the meaning of Article 120(1).

4. 
The notification of provisional refusal shall state the reasons on which it is 
based, and shall specify a time period by which the holder of the international 
registration may submit his observations and, if appropriate, shall appoint a rep  
resentative. The time period shall start on the day on which the Office issues 
the provisional refusal.

5.  Where the Office finds that the international application designating the 
Union does not contain the indication of a second language pursuant to Article 
206 of this Regulation, the Office shall issue an ex officio provisional notifica-
tion of refusal to the International Bureau pursuant to Article 5(1) and (2) of the 
Madrid Protocol.

6.  Where  the  holder  of  an  international  registration  fails  to  overcome  the 
ground for refusing protection within the time limit or, if appropriate, to appoint 
a representative or to indicate a second language, the Office shall refuse the 
protection in whole or for part of the goods and services for which the interna-
tional registration is registered. The refusal of protection shall take the place 
of a refusal of an EU trade mark application. The decision shall be subject to 
appeal in accordance with Articles 66 to 72.

7.  Where, as of the start of the opposition period referred to in Article 196(2), 
the Office has not issued an ex officio provisional notification of refusal pur-
suant to paragraph 2 of this Article, it shall send a statement to the Interna-
tional Bureau, indicating that the examination of absolute grounds of refusal 

The EUTM Regulation 153

pursuant to Article 42 has been completed but that the international registra-
tion is still subject to oppositions or observations of third parties. This interim 
statement shall be without prejudice to the right of the Office to re-open the 
examination of absolute grounds on its own initiative any time before the final 
statement of grant of protection has been issued.

The Commission shall adopt implementing acts specifying the details to 
8. 
be contained in the notification of ex officio provisional refusal of protection to 
be sent to the International Bureau and in the final communications to be sent 
to the International Bureau on the final grant or refusal of protection. Those 
implementing acts shall be adopted in accordance with the examination proce-
dure referred to in Article 207(2).

Article 194
Collective and certification marks

1.  Where an international registration is based on a basic application or basic 
registration relating to a collective mark, certification mark or guarantee mark, 
the international registration designating the Union shall be dealt with as an EU 
collective mark or as an EU certification mark, whichever is applicable.

EUTMR 
Art. 74, 83 
EUTMDR 
Art. 76

2. 
The holder of the international registration shall submit the regulations 
governing the use of the mark, as provided for in Articles 75 and 84, directly 
to the Office within two months of the date on which the International Bureau 
notifies the international registration to the Office.

3. 
The Commission is empowered to adopt delegated acts in accordance with 
Article  208  specifying  the  details  of  the  procedure  concerning  international 
registrations based on a basic application or basic registration relating to a col-
lective mark, certification mark or guarantee mark.

Article 195
Search

1.  Once the Office has received a notification of an international registration 
designating the Union, it shall draw up a Union search report as provided for 
in Article 43(1) provided that a request for a search report, pursuant to Article 
43(1), is made to the Office within one month of the date of notification.

2.  As soon as the Office has received a notification of an international reg-
istration designating the Union, the Office shall transmit a copy thereof to the 
central  industrial  property  office  of  each  Member  State  which  has  informed 
the Office of its decision to operate a search in its own register of trade marks 
as  provided  for  in  Article  43(2)  provided  that  a  request  for  a  search  report, 

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pursuant to Article 43(2), is made to the Office within one month of the date of 
notification and the search fee is paid within the same period.

3.  Article 43(3) to (6) shall apply mutatis mutandis.

4. 
The Office shall inform the proprietors of any earlier EU trade marks or 
EU trade mark applications cited in the Union search report of the publication 
of the international registration designating the Union as provided for in Article 
190(1). This shall apply whether or not the holder of the international registra-
tion has requested to receive the EU search report, unless the proprietor of an 
earlier registration or application requests not to receive the notification.

Article 196
Opposition

EUTMR 
Art. 8 
EUTMDR 
Art. 77, 78

International registration designating the Union shall be subject to opposi-

1. 
tion in the same way as published EU trade mark applications.

2.  Notice of opposition shall be filed within a period of three months which 
shall begin one month following the date of the publication pursuant to Article 
190(1). The opposition shall not be considered as duly entered until the opposi-
tion fee has been paid.

Refusal of protection shall take the place of refusal of an EU trade mark 

3. 
application.

4. 
The Commission is empowered to adopt delegated acts in accordance with 
Article 208 specifying the procedure for the filing and examination of an oppo-
sition, including the necessary communications to be made to the International 
Bureau.

Article 197
Replacement of an EU trade mark by an international registration

EUTMR 
Art. 111

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

The EUTM Regulation 155

EUTMR 
Art. 128 
EUTMIR 
Art. 34 

Article 198
Invalidation of the effects of an international registration

The effects of an international registration designating the Union may be 

1. 
declared invalid.

The application for invalidation of the effects of an international registra-
2. 
tion designating the Union shall take the place of an application for a declara-
tion of revocation as provided for in Article 58 or for a declaration of invalidity 
as provided for in Article 59 or Article 60.

3.  Where  pursuant  to  Article  64  or  Article  128  of  this  Regulation  and  this 
Article, the effects of an international registration designating the Union have 
been declared invalid by means of a final decision, the Office shall notify the In  
ternational Bureau in accordance with Article 5(6) of the Madrid Protocol.

4. 
The Commission shall adopt implementing acts specifying the details to 
be contained in the notification to be made to the International Bureau pursu-
ant to paragraph 3 of this Article. Those implementing acts shall be adopted in 
accordance with the examination procedure referred to in Article 207(2).

Article 199
Legal effect of registration of transfers

The recordal of a change in the ownership of an international registration on 
the International Register shall have the same effect as the entry of a transfer 
in the Register pursuant to Article 20.

Article 200
Legal effect of registration of licences and other rights

The  recordal  of  a  licence  or  a  restriction  of  the  holder’s  right  of  disposal  in 
respect of an international registration in the International Register shall have 
the same effect as the registration of a right in rem, a levy of execution, insol-
vency proceedings or a licence in the Register pursuant to Articles 22, 23, 24 
and 25 respectively.

Article 201
Examination of requests for registration of transfers, licences or 
restrictions of a holder’s right of disposal

The Office shall transmit requests to register a change in ownership, a licence 
or a restriction of the holder’s right of disposal, the amendment or cancella-
tion of a licence or the removal of a restriction of the holder’s right of disposal 

EUTMR 
Art. 26 
EUTMIR 
Art. 13 

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which have been filed with it to the International Bureau, if accompanied by 
appropriate proof of the transfer, licence, or the restriction of the right of dis-
posal, or by proof that the licence no longer exists or that it has been amended, 
or that the restriction of the right of disposal has been removed.

Article 202
Conversion of a designation of the Union through an international 
registration into a national trade mark application or into a designation of 
Member States

EUTMIR 
Art. 35 

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

into a national trade mark application pursuant to Articles 139, 140 and 

(a) 
141;

(b) 
into a designation of a Member State party to the Madrid Protocol, pro-
vided that on the date when conversion was requested it was possible to have 
designated that Member State directly under the Madrid Protocol. Articles 139, 
140 and 141 of this Regulation shall apply.

2. 
The national trade mark application or the designation of a Member State 
party to the Madrid Protocol resulting from the conversion of the designation 
of the Union through an international registration shall enjoy, in respect of the 
Member  State  concerned,  the  date  of  the  international  registration  pursuant 
to Article 3(4) of the Madrid Protocol or the date of the extension to the Union 
pursuant to Article 3ter(2) of the Madrid Protocol, if the latter was made sub-
sequent to the international registration, or the date of priority of that registra-
tion and, where appropriate, the seniority of a trade mark of that State claimed 
under Article 191 of this Regulation.

3. 

The request for conversion shall be published.

4. 
The request for conversion of an international registration designating the 
Union into a national trade mark application shall include the information and 
indications referred to in Article 140(1).

5.  Where conversion is requested pursuant to this Article and Article 139(5) 
of this Regulation following a failure to renew the international registration, the 
request referred to in paragraph 4 of this Article shall contain an indication to 
that effect and the date on which the protection expired. The period of three 
months provided for in Article 139(5) of this Regulation shall begin to run on 

The EUTM Regulation 157

the day following the last day on which the renewal may still be effected pursu-
ant to Article 7(4) of the Madrid Protocol.

6.  Article 140(3) and (5) shall apply to the request for conversion referred to 
in paragraph 4 of this Article mutatis mutandis.

The request for conversion of an international registration designating the 
7. 
Union into a designation of a Member State party to the Madrid Protocol shall 
include the indications and elements referred to in paragraphs 4 and 5.

8.  Article 140(3) shall apply to the request for conversion referred to in para-
graph 7 of this Article mutatis mutandis. The Office shall also reject the request 
for conversion where the conditions to designate the Member State which is 
a party to the Madrid Protocol or to the Madrid Agreement were fulfilled neither 
on the date of the designation of the Union nor on the date on which the appli-
cation for conversion was received or, pursuant to the last sentence of Article 
140(1), is deemed to have been received by the Office.

9.  Where  the  request  for  conversion  referred  to  in  paragraph  7  complies 
with the requirements of this Regulation and rules adopted pursuant to it, the 
Office shall transmit the request without delay to the International Bureau. The 
Office shall inform the holder of the international registration of the date of 
transmission.

10.  The Commission shall adopt implementing acts specifying:

the details to be contained in the requests for conversion referred to in 

(a) 
paragraphs 4 and 7;

the details to be contained in the publication of the requests for conver-

(b) 
sion pursuant to paragraph 3.

Those implementing acts shall be adopted in accordance with the examination 
procedure referred to in Article 207(2).

Article 203
Use of a mark subject of an international registration

For  the  purposes  of  applying  Article  18(1),  Article  47(2),  Article  58(1)(a)  and 
Article 64(2), the date of publication pursuant to Article 190(2) shall take the 
place of the date of registration  for the  purpose of  establishing the date  as 
from which the mark which is the subject of an international registration des-
ignating the Union shall be put to genuine use in the Union.

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Article 204
Transformation

EUTMR 
Art. 30, 31 
EUTMIR 
Art. 36 

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

2.  When the application for transformation relates to an international reg-
istration designating the Union the particulars of which have been published 
pursuant to Article 190(2), Articles 42 to 47 shall not apply.

3. 
In order to be considered a transformation of an international registration 
which has been cancelled at the request of the office of origin by the Inter-
national Bureau pursuant to Article 9quinquies of the Madrid Protocol, an EU 
trade mark application shall contain an indication to that effect. That indication 
shall be made when filing the application.

4.  Where, in the course of the examination in accordance with Article 41(1)
(b), the Office finds that the application was not filed within three months of 
the  date  on  which  the  international  registration  was  cancelled  by  the  Inter-
national Bureau, or the goods and services for which the EU trade mark is to 
be registered are not contained in the list of goods and services for which the 
international  registration  was  registered  in  respect  of  the  Union,  the  Office 
shall invite the applicant to remedy the deficiencies.

5. 
If the deficiencies referred to in paragraph 4 are not remedied within the 
time period specified by the Office, the right to the date of the international 
registration or the territorial extension and, if any, of the priority of the interna-
tional registration shall be lost.

6. 
The Commission shall adopt implementing acts specifying the details to 
be contained in an application for transformation pursuant to paragraph 3 of 
this Article. Those implementing acts shall be adopted in accordance with the 
examination procedure referred to in Article 207(2).

Article 205
Communication with the International Bureau

EUTMDR 
Art. 65

Communication with the International Bureau shall be in a manner and format 
agreed on between the International Bureau and the Office, and preferably be 
by  electronic  means.  Any  reference  to  forms  shall  be  construed  as  including 
forms made available in electronic format.

The EUTM Regulation 159

Article 206
Use of languages

For the purpose of applying this Regulation, and rules adopted pursuant to it, 
to international registrations designating the Union, the language of filing of 
the international application shall be the language of the proceedings within 
the meaning of Article 146(4), and the second language indicated in the inter-
national application shall be the second language within the meaning of Article 
146(3).

EUTMR 
Art. 193

CHAPTER XIV 
FINAL PROVISIONS

Article 207
Committee Procedure

1. 
The  Commission  shall  be  assisted  by  a  Committee  on  Implementation 
Rules. That committee shall be a committee within the meaning of Regulation 
(EU) No 182/2011.

2.  Where reference is made to this paragraph, Article 5 of Regulation (EU) No 
182/2011 shall apply.

Article 208
Exercise of the delegation

The power to adopt delegated acts is conferred on the Commission subject 

1. 
to the conditions laid down in this Article.

2. 
The power to adopt delegated acts referred to in Article 48, Article 49(3), 
Articles  65  and  73,  Articles  96(4),  97(6),  98(5),  100(2),  101(5),  103(3),  and 
106(3),  Articles  121  and  168,  and  Articles  194(3)  and  196(4)  shall  be  con-
ferred on the Commission for an indeterminate period of time from 23 March 
2016.

The delegation of power referred to in Article 48, Article 49(3), Articles 65 
3. 
and 73, Articles 96(4), 97(6), 98(5), 100(2), 101(5), 103(3), and 106(3), Articles 
121 and 168, and Articles 194(3) and 196(4) may be revoked at any time by 
the European Parliament or by the Council. A decision to revoke 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 Euro-

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

pean Union or at a later date specified therein. It shall not affect the validity of 
any delegated acts already in force.

4.  Before adopting a delegated act, the Commission shall carry out consul-
tations  with  experts,  including  experts  designated  by  each  Member  State  in 
accordance with the principles laid down in the Interinstitutional Agreement of 
13 April 2016 on Better Law-Making.

5.  As soon as it adopts a delegated act, the Commission shall notify it simul-
taneously to the European Parliament and to the Council.

6.  A delegated act adopted pursuant to Article 48, Article 49(3), Articles 65 
and 73, Articles 96(4), 97(6), 98(5), 100(2), 101(5), 103(3), and 106(3), Arti-
cles 121 and 168, and Articles 194(3) and 196(4) shall enter into force only 
if  no  objection  has  been  expressed  either  by  the  European  Parliament  or  by 
the  Council  within  a  period  of  two  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 two months at the initia-
tive of the European Parliament or of the Council.

Article 209
Provisions relating to the enlargement of the Union

EUTMR 
Art. 1, 14, 
34, 39

1.  As of the date of accession of Bulgaria, the Czech Republic, Estonia, Croa-
tia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Romania, Slovenia and 
Slovakia (‘new Member State(s)’), an EU trade mark registered or applied for 
pursuant to this Regulation before their respective date of accession shall be 
extended to the territory of those Member States in order to have equal effect 
throughout the Union.

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

3.  Where an application for the registration of an EU trade mark has been 
filed during the six months prior to the date of accession, notice of opposition 
may be given pursuant to Article 46 where an earlier trade mark or another 
earlier  right  within  the  meaning  of  Article  8  was  acquired  in  a  new  Member 
State prior to accession, provided that it was acquired in good faith and that the 
filing date or, where applicable, the priority date or the date of acquisition in the 
new Member State of the earlier trade mark or other earlier right precedes the 

The EUTM Regulation 161

filing date or, where applicable, the priority date of the EU trade mark applied 
for.

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

(a)  pursuant  to  Article  59  if  the  grounds  for  invalidity  became  applicable 
merely because of the accession of a new Member State;

(b)  pursuant to Article 60(1) and (2) if the earlier national right was registered, 
applied for or acquired in a new Member State prior to the date of accession.

5. 
The use of an EU trade mark as referred to in paragraph 1 may be prohib-
ited pursuant to Articles 137 and 138, if the earlier trade mark or other earlier 
right was registered, applied for or acquired in good faith in the new Member 
State  prior  to  the  date  of  accession  of  that  State;  or,  where  applicable,  has 
a priority date prior to the date of accession of that State.

Article 210
Evaluation and review

1.  By 24 March 2021, and every five years thereafter, the Commission shall 
evaluate the implementation of this Regulation.

2. 
The evaluation shall review the legal framework for cooperation between 
the  Office  and  the  central  industrial  property  offices  of  the  Member  States 
and the Benelux Office for Intellectual Property, paying particular attention to 
the financing mechanism laid down in Article 152. The evaluation shall further 
assess  the  impact,  effectiveness  and  efficiency  of  the  Office  and  its  work-
ing practices. The evaluation shall, in particular, address the possible need to 
modify the mandate of the Office, and the financial implications of any such 
modification.

3. 
The Commission shall forward the evaluation report together with its con-
clusions  drawn  on  the  basis  of  that  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 Office having regard to its objectives, mandate 
and tasks.

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

Article 211
Repeal

Regulation (EC) No 207/2009 is repealed.

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

Article 212
Entry into force

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

It shall apply from 1 October 2017.

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

Done at Strasbourg, 14 June 2017.

For the European Parliament 
The President 
A. TAJANI 

For the Council
The President
H. DALLI

 
 
 
The EUTM Regulation 163

ANNEX I 
AMOUNT OF FEES

A.  The fees to be paid to the Office under this Regulation shall 
be as follows (in EUR):

1.  Basic fee for the application for an individual EU trade mark (Article 31(2)): 
EUR 1 000

Basic fee for the application for an individual EU trade mark by electronic means (Arti-

2. 
cle 31(2)):
EUR 850

Fee for the second class of goods and services for an individual EU trade mark (Arti-

3. 
cle 31(2)): 
EUR 50

Fee  for  each  class  of  goods  and  services  exceeding  two  for  an  individual  EU 

4. 
trade mark (Article 31(2)): 
EUR 150

5.  Basic  fee  for  the  application  for  an  EU  collective  mark  or  an  EU  certification 
mark (Article 31(2) and Article 74(3) or Article 83(3)): 
EUR 1 800

6.  Basic  fee  for  the  application  for  an  EU  collective  mark  or  an  EU  certification 
mark by electronic means (Article 31(2) and Article 74(3) or Article 83(3)): 
EUR 1 500

Fee for the second class of goods and services for an EU collective mark or an 

7. 
EU certification mark: (Article 31(2) and Article 74(3) or Article 83(3)): 
EUR 50

Fee  for  each  class  of  goods  and  services  exceeding  two  for  an  EU  collective 

8. 
mark or an EU certification mark (Article 31(2) and 74(3) or Article 83(3)): 
EUR 150

9. 
Search fee for an EU trade mark application (Article 43(2)) or for an interna-
tional registration designating the Union (Article 43(2) and Article 195(2)): EUR 12 
multiplied by the number of central industrial property offices referred to in Article 
43(2); that amount, and the subsequent changes, shall be published by the Office in 
the Official Journal of the Office.

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

10.  Opposition fee (Article 46(3)): 
EUR 320

11.  Basic fee for the renewal of an individual EU trade mark (Article 53(3)): 
EUR 1 000

12.  Basic fee for the renewal of an individual EU trade mark by electronic means (Arti-
cle 53(3)): 
EUR 850

13.  Fee for the renewal of the second class of goods and services for an individual 
EU trade mark (Article 53(3)): 
EUR 50

14.  Fee for the renewal of each class of goods and services exceeding two for an 
individual EU trade mark (Article 53(3)): 
EUR 150

15.  Basic fee for the renewal of an EU collective mark or an EU certification mark 
(Article 53(3) and Article 74(3) or Article 83(3): 
EUR 1 800

16.  Basic fee for the renewal of an EU collective mark or an EU certification mark by 
electronic means (Article 53(3) and Article 74(3) or Article 83(3)): 
EUR 1 500

17.  Fee for the renewal of the second class of goods and services for an EU collec-
tive mark or an EU certification mark (Article 53(3) and Article 74(3) or Article 83(3)): 
EUR 50

18.  Fee for the renewal of each class of goods and services exceeding two for an EU 
collective mark or an EU certification mark (Article 53(3) and Article 74(3) or Article 
83(3)): 
EUR 150

19.  Additional fee for the late payment of the renewal fee or the late submission of 
the request for renewal (Article 53(3)): 25 % of the belated renewal fee, subject to 
a maximum of 
EUR 1 500

20.  Fee for the application for revocation or for a declaration of invalidity (Article 
63(2)):
EUR 630

The EUTM Regulation 165

21.  Appeal fee (Article 68(1)): 
EUR 720

22.  Fee for the application of restitutio in integrum (Article 104(3)): 
EUR 200

23.  Fee for the application for the conversion of an EU trade mark application or an 
EU trade mark (Article 140(1), also in conjunction with Article 202(1)):

(a) 

into a national trade mark application;

into a designation of Member States under the Madrid Protocol: 

(b) 
EUR 200

24.  Fee for continuation of proceedings (Article 105(1)): 
EUR 400

25.  Fee for the declaration of division of a registered EU trade mark (Article 56(4) or 
an application for an EU trade mark (Article 50(3)): 
EUR 250

26.  Fee for the application for the registration of a licence or another right in respect 
of a registered EU trade mark (Article 26(2)) or an application for an EU trade mark 
(Article 26(2)):

(a)  grant of a licence;

(b) 

transfer of a licence;

(c)  creation of a right in rem;

(d) 

transfer of a right in rem;

(e) 

levy of execution:

EUR  200  per  registration,  but  where  multiple  requests  are  submitted  in  the  same 
application or at the same time, not to exceed a total of EUR 1 000

27.  Fee for the cancellation of  the registration of  a licence or  other  right (Article 
29(3)): 
EUR 200 per cancellation, but where multiple requests are submitted in the same 
application or at the same time, not to exceed a total of EUR 1 000

28.  Fee for the alteration of a registered EU trade mark (Article 54(4)): 

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

EUR 200

29.  Fee  for  the  issue  of  a  copy  of  the  application  for  an  EU  trade  mark  (Article 
114(7)), a copy of the certificate of registration (Article 51(2)), or an extract from the 
register (Article 111(7)):

(a)  uncertified copy or extract: 
EUR 10

(b)  certified copy or extract: 
EUR 30

30.  Fee for the inspection of the files (Article 114(6)): 
EUR 30

31.  Fee for the issue of copies of file documents (Article 114(7)):

(a)  uncertified copy: 
EUR 10

(b)  certified copy: 
EUR 30

plus per page, exceeding 10: 
EUR 1

32.  Fee for the communication of information in a file (Article 114(9)): 
EUR 10

33.  Fee for the review of the determination of the procedural costs to be refunded 
(Article 109(8)): EUR 100

34.  Fee for the filing of an international application at the Office (Article 184(4)): 
EUR 300

B.  Fees to be paid to the International Bureau

I. 

Individual fee for an international registration designating the Union

1. 
The  applicant  for  an  international  registration  designating  the  Union  shall  be 
required to pay to the International Bureau an individual fee for the designation of 
the Union in accordance with Article 8(7) of the Madrid Protocol.

The EUTM Regulation 167

2. 
The  holder  of  an  international  registration  who  files  a  request  for  territorial 
extension designating the Union made subsequent to the international registration 
shall be required to pay to the International Bureau an individual fee for the designa-
tion of the Union in accordance with Article 8(7) of the Madrid Protocol.

3. 
The amount of the fee under points B.I.1 or B.I.2 shall be the equivalent in Swiss 
Francs, as established by the Director-General of the WIPO pursuant to Rule 35(2) of 
the Common Regulations under the Madrid Agreement and Protocol, of the following 
amounts:

for an individual trade mark: EUR 820 plus, where applicable, EUR 50 for the 
(a) 
second class of goods and services and EUR 150 for each class of goods and services 
contained in the international registration exceeding two;

(b) 
for a collective mark or a certification mark: EUR 1 400 plus, where applicable, 
EUR 50 for the second class of goods and services and EUR 150 for each class of 
goods or services exceeding two.

Individual  fee  for  a  renewal  of  an  international  registration  designating  the 

II. 
Union

1. 
The  holder  of  an  international  registration  designating  the  Union  shall  be 
required to pay to the International Bureau, as a part of the fees for a renewal of 
the international registration, an individual fee for the designation of the Union in 
accordance with Article 8(7) of the Madrid Protocol.

2. 
The amount of the fee referred to in point B.II.1 shall be the equivalent in Swiss 
Francs, as established by the Director-General of the WIPO pursuant to Rule 35(2) of 
the Common Regulations under the Madrid Agreement and Protocol, of the following 
amounts:

(a) 
for an individual trade mark: EUR 820 plus, where applicable, EUR 50 for the 
second class of goods and services and EUR 150 for each class of goods and services 
contained in the international registration exceeding two;

(b) 
for a collective mark or a certification mark: EUR 1 400 plus, where applicable, 
EUR 50 for the second class of goods and services and EUR 150 for each class of 
goods and services contained in the international registration exceeding two.

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

ANNEX II 
Repealed Regulation with list of its successive 
amendments

Council Regulation (EC) No 207/2009 (OJ L 78, 24.3.2009, p. 1)

Act of Accession of 2012, Annex III, point 2(I)

 Regulation (EU) 2015/2424 of the European Parliament and of the Council Only Arti-
cle 1 
(OJ L 341, 24.12.2015, p. 21)

 
 
The EUTM Regulation 169

ANNEX III 
Correlation table

Regulation (EC) No 207/2009

Articles 1 to 7

Article 8(1) to (4)

Article 8(4a)

Article 8(5)

Article 9

Article 9a

Article 9b

Article 10

Article 11

Article 12

Article 13

Article 13a

Article 14

Article 15

Article 16

This Regulation

Articles 1 to 7

Article 8(1) to (4)

Article 8(6)

Article 8(5)

Article 9

Article 10

Article 11

Article 12

Article 13

Article 14

Article 15

Article 16

Article 17

Article 18

Article 19

Article 17(1), (2) and (3)

Article 20(1), (2) and (3)

Article 17(5)

Article 17(5a)

Article 17(5b)

Article 17(5c)

Article 17(5d)

Article 17(5e)

Article 17(5f)

Article 17(6)

Article 17(7)

Article 17(8)

Article 18

Article 19

Article 20

Article 21

Article 22

Article 22a

Article 20(4)

Article 20(5)

Article 20(6)

Article 20(7)

Article 20(8)

Article 20(9)

Article 20(10)

Article 20(11)

Article 20(12)

Article 20(13)

Article 21

Article 22

Article 23

Article 24

Article 25

Article 26

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

Regulation (EC) No 207/2009

This Regulation

Article 23

Article 24

Article 24a

Article 25

Article 26

Article 27

Article 28

Article 29

Article 30

Article 31

Article 32

Article 33

Article 34(1)

Article 34(1a)

Article 34(2)

Article 34(3)

Article 34(4)

Article 34(5)

Article 34(6)

Article 35

Article 36

Article 37(1)

Article 37(3)

Article 38

Article 39

Article 40

Article 41

Article 42

Article 42a

Article 43

Article 27

Article 28

Article 29

Article 30

Article 31

Article 32

Article 33

Article 34

Article 35

Article 36

Article 37

Article 38

Article 39(1)

Article 39(2)

Article 39(3)

Article 39(4)

Article 39(5)

Article 39(6)

Article 39(7)

Article 40

Article 41

Article 42(1)

Article 42(2)

Article 43

Article 44

Article 45

Article 46

Article 47

Article 48

Article 49

Article 44(1) and (2)

Article 44(4)

Article 44(4a)

Article 44(5) to (9)

Article 45

Article 50(1) and (2)

Article 50(3)

Article 50(4)

Article 50(5) to (9)

Article 51

The EUTM Regulation 171

Regulation (EC) No 207/2009

This Regulation

Article 46

Article 47

Article 48

Article 48a

Article 49

Article 50

Article 51

Article 52

Article 53

Article 54

Article 55

Article 56

Article 57

Article 57a

Article 58

Article 59

Article 60

Article 61

Article 63

Article 64

Article 65

Article 65a

Article 66

Article 67

Article 68

Article 69

Article 70

Article 71

Article 72

Article 73

Article 74

Article 74a

Article 74b

Article 74c

Article 74d

Article 52

Article 53

Article 54

Article 55

Article 56

Article 57

Article 58

Article 59

Article 60

Article 61

Article 62

Article 63

Article 64

Article 65

Article 66

Article 67

Article 68

Article 69

Article 70

Article 71

Article 72

Article 73

Article 74

Article 75

Article 76

Article 77

Article 78

Article 79

Article 80

Article 81

Article 82

Article 83

Article 84

Article 85

Article 86

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

Regulation (EC) No 207/2009

This Regulation

Article 74e

Article 74f

Article 74g

Article 74h

Article 74i

Article 74j

Article 74k

Article 75

Article 76

Article 77

Article 78

Article 79

Article 79a

Article 79b

Article 79c

Article 79d

Article 80

Article 81

Article 82

Article 82a

Article 83

Article 84

Article 85(1)

Article 85(1a)

Article 85(2)

Article 85(3)

Article 85(4)

Article 85(5)

Article 85(6)

Article 85(7)

Article 86

Article 87

Article 87a

Article 87b

Article 88

Article 87

Article 88

Article 89

Article 90

Article 91

Article 92

Article 93

Article 94

Article 95

Article 96

Article 97

Article 98

Article 99

Article 100

Article 101

Article 102

Article 103

Article 104

Article 105

Article 106

Article 107

Article 108

Article 109(1)

Article 109(2)

Article 109(3)

Article 109(4)

Article 109(5)

Article 109(6)

Article 109(7)

Article 109(8)

Article 110

Article 111

Article 112

Article 113

Article 114

The EUTM Regulation 173

Regulation (EC) No 207/2009

This Regulation

Article 88a

Article 89

Article 90

Article 91

Article 92

Article 93

Article 93a

Article 94

Article 95(1)

Article 95(2)

Article 95(3)

Article 95(4)

Article 95(5)

Article 96

Article 97

Article 98

Article 99

Article 100

Article 101

Article 102

Article 103

Article 104

Article 105

Article 106

Article 107

Article 109

Article 110

Article 111

Article 112

Article 113

Article 114

Article 115

Article 116

Article 117

Article 118

Article 115

Article 116

Article 117

Article 118

Article 119

Article 120

Article 121

Article 122

Article 123(1)

—

Article 123(2)

Article 123(3)

—

Article 124

Article 125

Article 126

Article 127

Article 128

Article 129

Article 130

Article 131

Article 132

Article 133

Article 134

Article 135

Article 136

Article 137

Article 138

Article 139

Article 140

Article 141

Article 142

Article 143

Article 144

Article 145

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

Regulation (EC) No 207/2009

Article 119(1) to (5)

This Regulation

Article 146(1) to (5)

Article 119(5a)

Article 119(6)

Article 119(7)

Article 119(8)

Article 119(9)

Article 119(10)

Article 120

Article 121

Article 123

Article 123a

Article 123b

Article 123c

Article 124

Article 125

Article 126

Article 127

Article 128

Article 129

Article 130

Article 131

Article 132

Article 133

Article 134

Article 134a

Article 135

Article 136

Article 136a

Article 136b

Article 137

Article 137a

Article 138

Article 139

Article 140

Article 141

Article 146(6)

Article 146(7)

Article 146(8)

Article 146(9)

Article 146(10)

Article 146(11)

Article 147

Article 148

Article 149

Article 150

Article 151

Article 152

Article 153

Article 154

Article 155

Article 156

Article 157

Article 158

Article 159

Article 160

Article 161

Article 162

Article 163

Article 164

Article 165

Article 166

Article 167

Article 168

Article 169

Article 170

Article 171

Article 172

Article 173

Article 174

The EUTM Regulation 175

Regulation (EC) No 207/2009

This Regulation

Article 141a

Article 142

Article 143

Article 144

Article 144a

Article 144b

Article 144c

Article 145

Article 146

Article 147

Article 148

Article 148a

Article 149

Article 150

Article 151

Article 152

Article 153

Article 153a

Article 154

Article 154a

Article 155

Article 156

Article 157

Article 158

Article 158a

Article 158b

Article 158c

Article 159

Article 160

Article 161

Article 161a

Article 161b

Article 163

Article 175

Article 176

Article 177

Article 178

Article 179

Article 180

Article 181

Article 182

Article 183

Article 184

Article 185

Article 186

Article 187

Article 188

Article 189

Article 190

Article 191

Article 192

Article 193

Article 194

Article 195

Article 196

Article 197

Article 198

Article 199

Article 200

Article 201

Article 202

Article 203

Article 204

Article 205

Article 206

Article 207

Article 163a(1)

Article 163a(2), first sentence

Article 208(1)

Article 208(2)

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REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

Regulation (EC) No 207/2009

This Regulation

Article 163a(2), second sentence

Article 163a(3)

Article 163a(4)

Article 163a(5)

Article 165

Article 165a

Article 166

Article 167

Annex -I

Annex I

Annex II

Article 208(4)

Article 208(3)

Article 208(5)

Article 208(6)

Article 209

Article 210

Article 211

Article 212

Annex I

Annex II

Annex III

The EC 
Implementing 
and Delegated 
Regulations

The EC Implementing and Delegated Regulations 179

Commission Delegated Regulation  
(EU) 2018/625 

of 5 March 2018

supplementing Regulation (EU) 2017/1001  
of the European Parliament  
and of the Council on the European Union trade mark,  
and repealing Delegated Regulation (EU) 2017/1430

180

Commission DelegateD  Regulation  (eu) 2018/625

REGULATION (EU) 2018/625

TABLE OF CONTENTS (NOT PART OF THE OFFICIAL TEXT)

187
187

188
188
191
191
191

192
193
195
196
197

198
198

199
199
200

Subject matter 

TITLE I 
GENERAL PROVISIONS 
Article 1 
TITLE II 
PROCEDURE FOR OPPOSITION AND PROOF OF USE 
Article 2 
Article 3 
Article 4 
Article 5 
Article 6 

Notice of opposition 
Use of languages in opposition proceedings 
Information to the parties to opposition proceedings 
Admissibility of the opposition 
Commencement of the adversarial part of the opposition 
proceedings and prior closure of the proceedings 
Substantiation of the opposition 
Examination of the opposition 
Multiple oppositions 
Proof of use 

Article 7 
Article 8 
Article 9 
Article 10 
TITLE III 
AMENDMENT OF THE APPLICATION 
Article 11 
TITLE IV 
REVOCATION AND INVALIDITY OR ASSIGNMENT 
Article 12 
Article 13 
Article 14 

Amendment of the application 

Application for revocation or for a declaration of invalidity 
Languages used in revocation or invalidity proceedings 
Information to the parties concerning an application for 
revocation or for a declaration of invalidity 
Admissibility of an application for revocation or for a declaration 
of invalidity 
Substantiation of an application for revocation or for 
a declaration of invalidity 
Examination on the merits of an application for revocation or 
for a declaration of invalidity 
203
Multiple applications for revocation or for a declaration of invalidity 204
Proof of use in relation to an application for revocation or for 
a declaration of invalidity 
Request for assignment 

204
205

202

201

201

Notice of appeal 
Statement of grounds 
Admissibility of an appeal 

205
205
206
207

Article 15 

Article 16 

Article 17 

Article 18 
Article 19 

Article 20 
TITLE V 
APPEALS 
Article 21 
Article 22 
Article 23 

The EC Implementing and Delegated Regulations 181

Article 24 
Article 25 
Article 26 
Article 27 
Article 28 
Article 29 
Article 30 
Article 31 
Article 32 
Article 33 
Article 34 
Article 35 
Article 36 
Article 37 
Article 38 
Article 39 
Article 40 
Article 41 
Article 42 
Article 43 
Article 44 
Article 45 
Article 46 
Article 47 
Article 48 

208
Response 
208
Cross appeal 
209
Reply and rejoinder in inter partes proceedings 
209
Examination of the appeal 
210
Communications by the Board of Appeal 
211
Comments on questions of general interest 
211
Reopening of the examination of absolute grounds 
211
Examination of an appeal as a matter of priority 
212
Formal content of the Board of Appeal’s decision 
212
Reimbursement of the appeal fee 
Revision and revocation of the decision subject to appeal 
213
Allocation of an appeal to a Board and designation of a rapporteur 213
214
Cases falling under the authority of a single member 
215
Referral to the Grand Board 
216
Change in the composition of a Board 
216
Deliberation, voting and signing of decisions 
217
Chairperson of a Board of Appeal 
217
Rapporteur to a Board of Appeal 
Registry 
218
Order of seniority and replacement of members and chairpersons  219
220
Exclusion and objection 
220
Grand Board 
221
Presidium of the Boards of Appeal 
President of the Boards of Appeal 
222
Applicability to appeal proceedings of provisions relating to 
other proceedings 

222

Summons to oral proceedings 
Languages of oral proceedings 
Oral evidence of parties, witnesses or experts and inspection 
Commissioning of and opinions by experts 
Minutes of oral proceedings 
Costs of taking of evidence in oral proceedings 
Examination of written evidence 

TITLE VI 
ORAL PROCEEDINGS AND TAKING OF EVIDENCE 
Article 49 
Article 50 
Article 51 
Article 52 
Article 53 
Article 54 
Article 55 
TITLE VII 
NOTIFICATIONS BY THE OFFICE 
Article 56 
Article 57 
Article 58 
Article 59 
Article 60 
Article 61 
Article 62 

General provisions on notifications 
Notification by electronic means 
Notification by post or courier 
Notification by public notice 
Notification to representatives 
Irregularities in notification 
Notification of documents in the case of several parties 

223
223
223
223
224
225
225
226

227
227
228
228
229
229
229
229

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Commission DelegateD  Regulation  (eu) 2018/625

Suspension of proceedings 

Revocation of a decision or entry in the Register 

Calculation and duration of time limits 
Extension of time limits 
Expiry of time limits in special cases 

Communications to the Office in writing or by other means 
Annexes to communications by post or courier 
Forms 
Communications by representatives 

TITLE VIII 
WRITTEN COMMUNICATIONS AND FORMS 
Article 63 
Article 64 
Article 65 
Article 66 
TITLE IX 
TIME LIMITS 
Article 67 
Article 68 
Article 69 
TITLE X 
REVOCATION OF A DECISION 
Article 70 
TITLE XI 
SUSPENSION OF PROCEEDINGS 
Article 71 
TITLE XII 
INTERRUPTION OF PROCEEDINGS 
Article 72 
TITLE XIII 
REPRESENTATION 
Article 73 
Article 74 
Article 75 
TITLE XIV 
PROCEDURES CONCERNING THE INTERNATIONAL REGISTRATION OF 
MARKS 
Article 76 
Article 77 
Article 78 
Article 79 
TITLE XV 
FINAL PROVISIONS 
Article 80 
Article 81 
Article 82 

Collective and certification marks 
Opposition proceedings 
Notification of provisional refusals based on an opposition 
Statement of grant of protection 

Appointment of a common representative 
Authorisations 
Amendment of the list of professional representatives 

Transitional measures 
Repeal 
Entry into force and application 

Resumption of proceedings 

230
230
230
231
232

232
232
232
233

233
233

234
234

235
235

236
236
236
237

238
238
239
240
242

242
242
242
242

The EC Implementing and Delegated Regulations 183

COMMISSION DELEGATED REGULATION (EU) 
2018/625 of 5 March 2018 
supplementing Regulation (EU) 2017/1001 of 
the European Parliament and of the Council on 
the European Union trade mark, and repealing 
Delegated Regulation (EU) 2017/1430

THE EUROPEAN COMMISSION,

Having regard to the Treaty on the Functioning of the European Union,

Having regard to Regulation (EU) 2017/1001 of the European Parliament and 
of the Council of 14 June 2017 on the European Union trade mark (1), and in 
particular Article 48, Article 49(3), Article 65, Article 73, Article 96(4), Article 
97(6), Article 98(5), Article 100(2), Article 101(5), Article 103(3), Article 106(3), 
Article 121, Article 168, Article 194(3) and Article 196(4) thereof,

Whereas:

(1)  Council Regulation (EC) No 40/94 (2), which was codified as Council Regu-
lation (EC) No 207/2009 (3), created a system specific to the Union for the pro-
tection of trade marks to be obtained at the level of the Union on the basis of 
an application to the European Union Intellectual Property Office (‘the Office’).

(2)  Regulation (EU) 2015/2424 of the European Parliament and of the Coun-
cil  (4)  amending  Regulation  (EC)  No  207/2009  aligned  the  powers  conferred 
therein upon the Commission with Articles 290 and 291 of the Treaty on the 
Functioning  of  the  European  Union.  In  order  to  conform  with  the  new  legal 

(1)  OJ L 154, 16.6.2017, p. 1.

(2)  Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ L 11, 

14.1.1994, p. 1).

(3)  Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ L 78, 

24.3.2009, p. 1).

(4)  Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 
amending  Council  Regulation  (EC)  No  207/2009  on  the  Community  trade  mark  and  Commission 
Regulation  (EC)  No  2868/95  implementing  Council  Regulation  (EC)  No  40/94  on  the  Community 
trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office 
for Harmonization in the Internal Market (Trade Marks and Designs) (OJ L 341, 24.12.2015, p. 21).

184

Commission  DelegateD Regulation  (eu) 2018/625

framework  resulting  from  that  alignment,  Commission  Delegated  Regulation 
(EU) 2017/1430 (5) and Commission Implementing Regulation (EU) 2017/1431 
(6) were adopted.

(3)  Regulation (EC) No 207/2009 was codified as Regulation (EU) 2017/1001. 
For reasons of clarity and simplification, the references contained in a Dele-
gated Regulation should reflect the renumbering of articles resulting from such 
a codification of the relevant basic act. Delegated Regulation (EU) 2017/1430 
should therefore be repealed and the provisions of that Delegated Regulation 
should be laid down, with updated references to Regulation (EU) 2017/1001, in 
this Regulation.

(4)  The  procedural  rules  on  opposition  should  ensure  an  effective,  efficient 
and expeditious examination and registration of EU trade mark applications by 
the Office using a procedure which is transparent, thorough, fair and equitable. 
In order to enhance legal certainty and clarity, those opposition rules should 
take account of the extended relative grounds for refusal laid down in Regula-
tion (EU) 2017/1001, in particular as regards the requirements for admissibility 
and substantiation of opposition proceedings, and be adjusted to better reflect 
the case-law of the Court of Justice of the European Union and to codify the 
practice of the Office.

(5) 
In order to allow for a more flexible, consistent and modern trade mark 
system in the Union, while ensuring legal certainty, it is appropriate to reduce 
the administrative burden for the parties in inter partes proceedings by relax-
ing the requirements for the substantiation of earlier rights in cases where the 
content of the relevant evidence is accessible online from a source recognised 
by the Office, as well as the requirement of submitting evidence in the lan-
guage of the proceedings.

(6) 
In the interest of clarity and legal certainty, it is important to specify the 
requirements for amending an application for an EU trade mark in a clear and 
exhaustive manner.

(7)  The procedural rules governing the revocation and declaration of invalid-
ity of an EU trade mark should ensure that an EU trade mark can be revoked 
or declared invalid in an effective and efficient way by means of transparent, 

(5)  Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regula-
tion (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations 
(EC) No 2868/95 and (EC) No 216/96 (OJ L 205, 8.8.2017, p. 1).

(6)  Commission Implementing Regulation (EU) 2017/1431 of 18 May 2017 laying down detailed rules 
for implementing certain provisions of Council Regulation (EC) No 207/2009 on the European Union 
trade mark (OJ L 205, 8.8.2017, p. 39).

The EC Implementing and Delegated Regulations 185

thorough, fair and equitable procedures. For the sake of greater clarity, consist-
ency as well as efficiency and legal certainty, the procedural rules governing 
the  revocation  and  declaration  of  invalidity  of  an  EU  trade  mark  should  be 
aligned with those applicable to opposition proceedings, retaining only those 
differences  which  are  required  due  to  the  specific  nature  of  revocation  and 
declaration of invalidity proceedings. Furthermore, requests for assignment of 
an EU trade mark registered in the name of an unauthorised agent should fol-
low the same procedural path as invalidity proceedings, serving in practice as 
an alternative to invalidating the mark.

(8)  According  to  settled  case-law  of  the  Court  of  Justice  (7),  unless  other-
wise provided, the Office enjoys discretionary powers when examining belated 
evidence, submitted for the purpose of either substantiating an opposition or 
proving genuine use of the earlier mark in the context of opposition or invalid-
ity proceedings. In order to ensure legal certainty the relevant boundaries of 
such discretion should be accurately reflected in the rules governing opposition 
proceedings or proceedings for the declaration of invalidity of EU trade marks.

(9) 
In order to allow for an effective, efficient and, within the scope of the 
appeal defined by the parties, complete review of decisions taken by the Office 
in the first instance by means of a transparent, thorough, fair and impartial 
appeal procedure suited to the specific nature of intellectual property law and 
taking into account the principles laid down in Regulation (EU) 2017/1001, it 
is appropriate to reinforce legal certainty and predictability by clarifying and 
specifying the procedural rules and the parties’ procedural guarantees, in par-
ticular where a defendant makes use of the right to file a cross appeal.

(10)  In order to ensure an effective and efficient organisation of the Boards 
of  Appeal,  the  President,  the  chairpersons  and  the  members  of  the  Boards 
of Appeal should, in the exercise of their respective functions conferred upon 
them  by  Regulation  (EU)  2017/1001  and  by  this  Regulation,  be  required  to 
ensure a high quality and consistency of the decisions taken independently by 
the Boards on appeal as well as the efficiency of the appeal proceedings.

(7)  Judgment of 13 March 2007, Case C-29/05P, OHIM/Kaul GmbH, (ARCOL/CAPOL), ECLI:EU:C:2007:162, 
paragraphs  42-44;  judgment  of  18  July  2013,  Case  C-621/11P,  New  Yorker  SHK  Jeans  GmbH  & 
Co.  KG/OHIM,  (FISHBONE/FISHBONE  BEACHWEAR),  ECLI:EU:  C:2013:484,  paragraphs  28-30;  judg-
ment of 26 September 2013, Case C-610/11P, Centrotherm Systemtechnik GmbH/OHIM, (CENTRO-
THERM), ECLI:EU:C:2013:593, paragraphs 85-90 and 110-113; judgment of 3 October 2013, Case 
C-120/12P, Bernhard Rintisch/OHIM, (PROTI SNACK/PROTI), ECLI:EU:C:2013:638, paragraphs 32 and 
38-39; judgment of 3 October 2013, Case C-121/12P, Bernhard Rintisch/OHIM, (PROTIVITAL/PROTI), 
ECLI:EU:C:2013:639, paragraphs 33 and 39-40; judgment of 3 October 2013, Case C-122/12P, Bern-
hard Rintisch/OHIM, (PROTIACTIVE/PROTI), ECLI:EU:C:2013:628; paragraphs 33 and 39-40; judgment 
of 21 July 2016, Case C-597/14P, EUIPO/Xavier Grau Ferrer, ECLI:EU:C:2016:579, paragraphs 26-27.

186

Commission  DelegateD Regulation  (eu) 2018/625

(11)  In  order  to  ensure  the  independence  of  the  President,  the  chairpersons 
and the members of the Boards of Appeal as provided in Article 166 of Regu-
lation (EU) 2017/1001, the Management Board should take the latter Article 
into account when adopting appropriate implementing rules to give effect to 
the Staff Regulations and the Conditions of Employment of Other Servants in 
accordance with Article 110 of the Staff Regulations.

(12)  In order to enhance the transparency and predictability of the appeal pro-
ceedings, the rules of procedure of the Boards of Appeal originally laid down in 
Commission Regulation (EC) No 2868/95 (8) and Commission Regulation (EC) 
No 216/96 (9), should be set out in a single text and properly interlinked with 
the procedural rules applicable to the instances of the Office whose decisions 
are subject to appeals.

(13)  For  the  sake  of  clarity  and  legal  certainty,  it  is  required  to  codify  and 
clarify certain procedural rules governing oral proceedings, in particular relat-
ing  to  the  language  of  such  proceedings.  It  is  further  appropriate  to  provide 
greater efficiency and flexibility by introducing the possibility of taking part in 
oral proceedings by technical means and of substituting the minutes of oral 
proceedings by their recording.

(14)  In order to further streamline proceedings and render them more consist-
ent, it is appropriate to set out the basic structure and format of evidence to be 
submitted to the Office in all proceedings, as well as the consequences of not 
submitting evidence in accordance with that structure and format.

(15)  In order to modernise the trade mark system in the Union by adapting it to 
the internet era, it is further appropriate to provide for a definition of ‘electronic 
means’ in the context of notifications and for forms of notification that are not 
obsolete.

(16)  In the interest of efficiency, transparency and user-friendliness, the Office 
should make available standard forms in all the official languages of the Office 
for communication in proceedings before the Office, which may be completed 
online.

(17)  For the purposes of greater clarity, consistency and efficiency, a provision 
on the suspension of opposition, revocation, invalidity and appeal proceedings 

(8)  Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation 

(EC) No 40/94 on the Community trade mark (OJ L 303, 15.12.1995, p. 1).

(9)  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 Market (Trade Marks and Designs) 
(OJ L 28, 6.2.1996, p. 11).

The EC Implementing and Delegated Regulations 187

should be introduced, laying down also the maximum duration of a suspension 
requested by both parties.

(18)  The rules governing the calculation and duration of time limits, the pro-
cedures for the revocation of a decision or for cancellation of an entry in the 
Register, the detailed arrangements for the resumption of proceedings, and the 
details on representation before the Office need to ensure a smooth, effective 
and efficient operation of the EU trade mark system.

(19)  It is necessary to ensure the effective and efficient registration of inter-
national trade marks in a manner that is fully consistent with the rules of the 
Protocol relating to the Madrid Agreement concerning the international regis-
tration of marks.

(20)  Implementing Regulation (EU) 2017/1431 and Delegated Regulation (EU) 
2017/1430  replaced  the  rules  previously  laid  down  in  Regulations  (EC)  No 
2868/95 and (EC) No 216/96 which were therefore repealed. Notwithstanding 
that repeal, it is necessary to continue to apply specific provisions of Regula-
tions  (EC)  No  2868/95  and  (EC)  No  216/96  to  certain  proceedings  that  had 
been  initiated  before  the  date  of  applicability  of  Regulation  (EU)  2017/1430 
until the conclusion of those proceedings,

HAS ADOPTED THIS REGULATION:

TITLE I 
GENERAL PROVISIONS

Article 1
Subject matter

This Regulation lays down rules specifying:

(a) 
the details of the procedure for filing and examining an opposition to the 
registration of an EU trade mark at the European Union Intellectual Property 
Office (‘the Office’);

the details of the procedure governing the amendment of an application 

(b) 
for an EU trade mark;

the details governing the revocation and declaration of invalidity of an EU 
(c) 
trade mark, as well as the transfer of an EU trade mark registered in the name 
of an unauthorised agent;

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Commission  DelegateD Regulation  (eu) 2018/625

(d) 
the formal content of a notice of appeal and the procedure for the filing 
and the examination of an appeal, the formal content and form of the Boards 
of  Appeal’s  decisions  and  the  reimbursement  of  the  appeal  fee,  the  details 
concerning the organisation of the Boards of Appeal, and the conditions under 
which decisions on appeals are to be taken by a single member;

the  detailed  arrangements  for  oral  proceedings  and  for  the  taking  of 

(e) 
evidence;

the detailed arrangements for notification by the Office and the rules on 

(f) 
the means of communication with the Office;

(g) 

the details regarding the calculation and duration of time limits;

the procedure for the revocation of a decision or for the cancellation of an 

(h) 
entry in the Register of EU trade marks;

the detailed arrangements for the resumption of proceedings before the 

(i) 
Office;

(j) 
the conditions and the procedure for the appointment of a common repre-
sentative, the conditions under which employees and professional representa-
tives shall file an authorisation, and the content of that authorisation, and the 
circumstances  in  which  a  person  may  be  removed  from  the  list  of  admitted 
professional representatives;

(k) 
the details of the procedure concerning international registrations based 
on a basic application or basic registration relating to a collective mark, certifi-
cation mark or guarantee mark, and the procedure for the filing and examina-
tion of an opposition to an international registration.

TITLE II 
PROCEDURE FOR OPPOSITION AND PROOF OF USE

Article 2
Notice of opposition

EUTMR 
Art. 25, 27, 
146 
EUTMDR 
Art. 3, 5

1.  A notice of opposition may be entered on the basis of one or more ear-
lier  marks  or  other  rights  within  the  meaning  of  Article  8  of  Regulation  (EU) 
2017/1001,  provided  that  the  proprietors  or  authorised  persons  entering  the 
notice pursuant to Article 46 of Regulation (EU) 2017/1001 are entitled to do 
so  for  all  the  earlier  marks  or  rights.  Where  an  earlier  mark  has  more  than 

The EC Implementing and Delegated Regulations 189

one proprietor (‘co-ownership’) or where an earlier right may be exercised by 
more than one person, an opposition pursuant to Article 46 of Regulation (EU) 
2017/1001 may be filed by any or all of the proprietors or authorised persons.

2. 

The notice of opposition shall contain:

the file number of the application against which opposition is entered and 

(a) 
the name of the applicant for the EU trade mark;

(b)  a clear identification of the earlier mark or right on which the opposition is 
based, namely:

(i)  where the opposition is based on an earlier mark within the meaning 
of Article 8(2)(a) or (b) of Regulation (EU) 2017/1001, the file number 
or registration number of the earlier mark, an indication of whether 
the earlier mark is registered or an application for registration of that 
mark, as well as an indication of the Member States including, where 
applicable, the Benelux, in or for which the earlier mark is protected, 
or, if applicable, the indication that it is an EU trade mark;

(ii)  where  the  opposition  is  based  on  a  well-known  mark  within  the 
meaning of Article 8(2)(c) of Regulation (EU) 2017/1001, the indica-
tion of the Member State(s) where the mark is well known and a rep-
resentation of the mark;

(iii)  where  the  opposition  is  based  on  the  absence  of  the  proprietor’s 
consent as referred to in Article 8(3) of Regulation (EU) 2017/1001, 
an indication of the territory in which the earlier trade mark is pro-
tected, the representation of the mark and, if applicable, an indica-
tion  whether  the  earlier  mark  is  an  application  or  a  registration,  in 
which case the filing or registration number shall be provided;

(iv)  where  the  opposition  is  based  on  an  earlier  mark  or  another  sign 
within the meaning of Article 8(4) of Regulation (EU) 2017/1001, an 
indication of its kind or nature, a representation of the earlier mark 
or sign, and an indication of whether the right to the earlier mark or 
sign exists in the whole Union or in one or more Member States, and 
if so, an indication of those Member States;

(v)  where the opposition is based on an earlier designation of origin or 
geographical indication within the meaning of Article 8(6) of Regu-
lation (EU) 2017/1001, an indication of its nature, a representation 
of  the  earlier  designation  of  origin  or  geographical  indication,  and 
an indication of whether it is protected in the whole Union or in one 

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Commission  DelegateD Regulation  (eu) 2018/625

or  more  Member  States,  and  if  so,  an  indication  of  those  Member 
States;

(c) 
the grounds on which the opposition is based by means of a statement to 
the effect that the requirements under Article 8(1), (3), (4), (5) or (6) of Regula-
tion (EU) 2017/1001 in respect of each of the earlier marks or rights invoked by 
the opposing party are fulfilled;

(d) 
in the case of an earlier trade mark application or registration, the filing 
date  and,  where  available,  the  registration  date  and  the  priority  date  of  the 
earlier mark;

(e) 
in  the  case  of  earlier  rights  pursuant  to  Article  8(6)  of  Regulation  (EU) 
2017/1001, the date of application for registration or, if that date is not avail-
able, the date from which protection is granted;

(f) 
in the case of an earlier trade mark application or registration, a represen-
tation of the earlier mark as registered or applied for; if the earlier mark is in 
colour, the representation shall be in colour;

(g)  an indication of the goods or services on which each of the grounds of the 
opposition is based;

(h)  as concerns the opposing party:

(i) 

the  identification  of  the  opposing  party  in  accordance  with  Article 
2(1)(b) of Implementing Regulation (EU) 2018/626 (10);

(ii)  where the opposing party has appointed a representative, or where 
representation is mandatory pursuant to Article 119(2) of Regulation 
(EU) 2017/1001, the name and business address of the representa-
tive  in  accordance  with  Article  2(1)(e)  of  Implementing  Regulation 
(EU) 2018/626;

(iii)  where the opposition is entered by a licensee or by a person who is 
entitled under the relevant Union legislation or national law to exer-
cise an earlier right, a statement to that effect and indications con-
cerning the authoris  ation or the entitlement to file the opposition;

(i) an indication of the goods or services against which the opposition is directed; 
in the absence of such an indication, the opposition shall be considered to be 
directed  against  all  of  the  goods  or  services  of  the  opposed  EU  trade  mark 
application.

The EC Implementing and Delegated Regulations 191

3.  Where the opposition is based on more than one earlier mark or earlier 
right, paragraph 2 shall apply for each of those marks, signs, designations of 
origin or geographical indications.

4. 
The notice of opposition may also contain a reasoned statement on the 
grounds, the facts and arguments on which the opposition relies, and support-
ing evidence.

Article 3
Use of languages in opposition proceedings

EUTMIR 
Art. 25 

The opposing party or the applicant may, before the date on which the adver-
sarial part of the opposition proceedings is deemed to commence pursuant to 
Article 6(1), inform the Office that the applicant and the opposing party have 
agreed on a different language for the opposition proceedings pursuant to Arti-
cle 146(8) of Regulation (EU) 2017/1001. Where the notice of opposition has 
not been filed in that language, the applicant may request that the opposing 
party file a translation in that language. Such a request must be received by 
the Office not later than the date on which the adversarial part of the opposi-
tion proceedings is deemed to commence. The Office shall specify a time limit 
for the opposing party to file a translation. Where that translation is not filed 
or  filed  late,  the  language  of  the  proceedings  as  determined  in  accordance 
with Article 146 of Regulation (EU) 2017/1001 (‘language of proceedings’) shall 
remain unchanged.

Article 4
Information to the parties to opposition proceedings

The notice of opposition and any document submitted by the opposing party, as 
well as any communication addressed to one of the parties by the Office prior 
to the finding on admissibility shall be sent by the Office to the other party for 
purposes of informing of the introduction of an opposition.

EUTMDR 
Art. 5

Article 5
Admissibility of the opposition

1.  Where the opposition fee has not been paid within the opposition period 
laid down in Article 46(1) of Regulation (EU) 2017/1001, the opposition shall 
be deemed not to have been entered. Where the opposition fee has been paid 

EUTMIR 
Art. 25 

(10) Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules 
for implementing certain provisions of Regulation (EU) 2017/1001 of the European Parliament and 
of  the  Council  on  the  European  Union  trade  mark,  and  repealing  Implementing  Regulation  (EU) 
2017/1431 (OJ L 104, 24.4.2018, p. 37).

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Commission  DelegateD Regulation  (eu) 2018/625

after the expiry of the opposition period, it shall be refunded to the opposing 
party.

2.  Where the notice of opposition has been filed after the expiry of the oppo-
sition period, the Office shall reject the opposition as inadmissible.

3.  Where the notice of opposition has been filed in a language which is not 
one of the languages of the Office as required under Article 146(5) of Regula-
tion (EU) 2017/1001, or where it does not comply with Article 2(2)(a), (b) or (c) 
of this Regulation, and where those deficiencies have not been remedied before 
the  expiry  of  the  opposition  period,  the  Office  shall  reject  the  opposition  as 
inadmissible.

4.  Where the opposing party does not submit a translation as required under 
Article 146(7) of Regulation (EU) 2017/1001, the opposition shall be rejected as 
inadmissible. Where the opposing party submits an incomplete translation, the 
part of the notice of opposition that has not been translated shall not be taken 
into account in the examination of admissibility.

5.  Where  the  notice  of  opposition  does  not  comply  with  the  provisions  of 
Article 2(2)(d) to (h), the Office shall inform the opposing party accordingly and 
shall invite it to remedy the deficiencies noted within a period of two months. If 
the deficiencies are not remedied before the time limit expires, the Office shall 
reject the opposition as inadmissible.

6. 
The Office shall notify the applicant of any finding pursuant to paragraph 
1 that the notice of opposition is deemed not to have been entered and of any 
decision to reject the opposition on the grounds of inadmissibility under para-
graphs 2, 3, 4 or 5. Where an opposition is rejected in its entirety as inadmis-
sible pursuant to paragraphs 2, 3, 4 or 5, prior to the notification of Article 6(1), 
no decision on costs shall be taken.

Article 6
Commencement of the adversarial part of the opposition proceedings and 
prior closure of the proceedings

EUTMR 
Art. 47, 49

1.  Where the opposition is found admissible pursuant to Article 5, the Office 
shall send a communication to the parties informing them that the adversarial 
part of the opposition proceedings shall be deemed to commence two months 
after receipt of the communication. That period may be extended to a total of 
24 months if both parties request an extension before the two-month period 
expires.

The EC Implementing and Delegated Regulations 193

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

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

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

5.  Where,  before  the  expiry  of  the  period  referred  to  in  paragraph  1,  the 
opposition proceedings are closed following a withdrawal or restriction of the 
application pursuant to paragraph 2 or following a withdrawal of the opposition 
pursuant to paragraph 3, the opposition fee shall be refunded.

Article 7
Substantiation of the opposition

1. 
The  Office  shall  give  the  opposing  party  the  opportunity  to  submit  the 
facts, evidence and arguments in support of the opposition or to complete any 
facts,  evidence  or  arguments  that  have  already  been  submitted  pursuant  to 
Article 2(4). For that purpose, the Office shall specify a time limit which shall 
be at least two months, starting on the date on which the adversarial part of 
the opposition proceedings is deemed to commence in accordance with Article 
6(1).

EUTMDR 
Art. 55 
EUTMIR 
Art. 25 

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

(a)  where the opposition is based on an earlier trade mark within the meaning 
of Article 8(2)(a) and (b) of Regulation (EU) 2017/1001, which is not an EU trade 
mark, evidence of its filing or registration, by submitting:

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(i) 

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

(ii)  where the earlier trade mark is registered, a copy of the relevant reg-
istration certificate and, if applicable, of the latest renewal certifi-
cate, showing that the term of protection of the trade mark extends 
beyond  the  time  limit  referred  to  in  paragraph  1  or  any  extension 
thereof, or equivalent documents from the administration by which 
the trade mark was registered;

(b)  where the opposition is based on a well-known mark within the meaning 
of  Article  8(2)(c)  of  Regulation  (EU)  2017/1001,  evidence  showing  that  that 
mark is well known in the relevant territory for the goods or services indicated 
in accordance with Article 2(2)(g) of this Regulation;

(c)  where the opposition is based on the absence of the proprietor’s consent 
as  referred  to  in  Article  8(3)  of  Regulation  (EU)  2017/1001,  evidence  of  the 
opposing party’s proprietorship of the prior trade mark and of its relationship 
with the agent or representative;

(d)  where the opposition is based on an earlier right within the meaning of 
Article 8(4) of Regulation (EU) 2017/1001, evidence showing use of that right 
in the course of trade of more than mere local significance, as well as evidence 
of its acquisition, continued existence and scope of protection including, where 
the earlier right is invoked pursuant to the law of a Member State, a clear iden-
tification of the content of the national law relied upon by adducing publica-
tions of the relevant provisions or jurisprudence;

(e)  where the opposition is based on an earlier designation of origin or geo-
graphical  indication  within  the  meaning  of  Article  8(6)  of  Regulation  (EU) 
2017/1001, evidence of its acquisition, continued existence and scope of pro-
tection including, where the earlier designation of origin or geographical indi-
cation is invoked pursuant to the law of a Member State, a clear identification 
of the content of the national law relied upon by adducing publications of the 
relevant provisions or jurisprudence;

if the opposition is based on a mark with a reputation within the mean-
(f) 
ing  of  Article  8(5)  of  Regulation  (EU)  2017/1001,  in  addition  to  the  evidence 
referred to in point (a) of this paragraph, evidence showing that the mark has 
a reputation in the Union or in the Member State concerned for the goods or 
services indicated in accordance with Article 2(2)(g) of this Regulation, as well 
as  evidence  or  arguments  showing  that  use  without  due  cause  of  the  trade 

The EC Implementing and Delegated Regulations 195

mark applied for would take unfair advantage of, or be detrimental to, the dis-
tinctive character or the repute of the earlier trade mark.

3.  Where  the  evidence  concerning  the  filing  or  registration  of  the  earlier 
rights referred to in paragraph 2(a) or, where applicable, paragraph 2(d) or (e), 
or the evidence concerning the content of the relevant national law, is acces-
sible online from a source recognised by the Office, the opposing party may 
provide such evidence by making reference to that source.

4.  Any  filing,  registration  or  renewal  certificates  or  equivalent  documents 
referred to in paragraph 2(a), (d) or (e), as well as any provisions of the appli-
cable national law governing the acquisition of rights and their scope of pro-
tection as referred to in paragraph 2(d) and (e), including evidence accessible 
online as referred to in paragraph 3, shall be in the language of the proceedings 
or shall be accompanied by a translation into that language. The translation 
shall be submitted by the opposing party of its own motion within the time limit 
specified for submitting the original document. Any other evidence submitted 
by the opposing party to substantiate the opposition shall be subject to Article 
24  of  Implementing  Regulation  (EU)  2018/626.  Translations  submitted  after 
the expiry of the relevant time limits shall not be taken into account.

5. 
The  Office  shall  not  take  into  account  written  submissions,  or  parts 
thereof, which have not been submitted in or not been translated into the lan-
guage of the proceedings within the time limit set by the Office in accordance 
with paragraph 1.

Article 8
Examination of the opposition

1.  Where, until the expiry of the period referred to in Article 7(1), the oppos-
ing  party  has  not  provided  any  evidence,  or  where  the  evidence  provided  is 
manifestly irrelevant or manifestly insufficient to meet the requirements laid 
down in Article 7(2) for any of the earlier rights, the opposition shall be rejected 
as unfounded.

EUTMR 
Art. 47

2.  Where the opposition is not rejected pursuant to paragraph 1, the Office 
shall communicate the submission of the opposing party to the applicant and 
shall invite it to file its observations within a period specified by the Office.

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

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Commission  DelegateD Regulation  (eu) 2018/625

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

5.  Where, after the expiry of the period referred to in Article 7(1), the oppos-
ing party submits facts or evidence that supplement relevant facts or evidence 
provided within that period and that relate to the same requirement laid down 
in  Article  7(2),  the  Office  shall  exercise  its  discretion  under  Article  95(2)  of 
Regulation (EU) 2017/1001 in deciding whether to accept these supplementing 
facts or evidence. For that purpose, the Office shall take into account, in par-
ticular, the stage of proceedings and whether the facts or evidence are, prima 
facie, likely to be relevant for the outcome of the case and whether there are 
valid reasons for the late submission of the facts or evidence.

The  Office  shall  invite  the  applicant  to  submit  further  observations  in 

6. 
response if it deems it appropriate under the circumstances.

7.  Where the opposition has not been rejected pursuant to paragraph 1 and 
the evidence submitted by the opposing party is not sufficient to substantiate 
the  opposition  in  accordance  with  Article  7  for  any  of  the  earlier  rights,  the 
opposition shall be rejected as unfounded.

8.  Article 6(2) and (3) shall apply mutatis mutandis after the date on which 
the  adversarial  part  of  the  opposition  proceedings  is  deemed  to  commence. 
Where the applicant wishes to withdraw or restrict the contested application, it 
shall do so by way of a separate document.

9. 
In appropriate cases, the Office may invite the parties to limit their obser-
vations to particular issues, in which case it shall allow them to raise the other 
issues at a later stage of the proceedings. The Office shall not be required to 
inform a party of the possibility of producing certain relevant facts or evidence 
which that party previously failed to produce.

Article 9
Multiple oppositions

EUTMR 
Art. 47, 
108 
EUTMDR 
Art. 2, 6

1.  Where a number of oppositions have been entered in respect of the same 
application for the registration of an EU trade mark, the Office may examine 
them in one set of proceedings. The Office may subsequently decide to exam-
ine those oppositions separately.

2.  Where a preliminary examination of one or more oppositions reveals that 
the EU trade mark for which an application for registration has been filed may 
be ineligible for registration in respect of some or all of the goods or services 

The EC Implementing and Delegated Regulations 197

for which registration is sought, the Office may suspend the other opposition 
proceedings relating to that application. The Office shall inform the opposing 
parties affected by the suspension of any relevant decisions taken in the con-
text of those proceedings which are ongoing.

3.  Once a decision rejecting an application as referred to in paragraph 1 has 
become final, the oppositions for which proceedings have been suspended in 
accordance with paragraph 2 shall be deemed to have been disposed of and 
the opposing parties concerned shall be informed accordingly. Such a disposi-
tion shall be considered to constitute a case which has not proceeded to judg-
ment within the meaning of Article 109(5) of Regulation (EU) 2017/1001.

4. 
The Office shall refund 50 % of the opposition fee paid by each opposing 
party whose opposition is deemed to have been disposed of in accordance with 
paragraph 3, provided that the suspension of the proceedings relating to that 
opposition took place before the commencement of the adversarial part of the 
proceedings.

Article 10
Proof of use

1.  A request for proof of use of an earlier mark pursuant to Article 47(2) or 
(3) of Regulation (EU) 2017/1001 shall be admissible if it is submitted as an 
unconditional  request  in a separate document  within the  period specified  by 
the Office pursuant to Article 8(2) of this Regulation.

EUTMR 
Art. 18, 
146

2.  Where  the  applicant  has  made  a  request  for  proof  of  use  of  an  earlier 
mark which complies with the requirements of Article 47(2) or (3) of Regulation 
(EU) 2017/1001, the Office shall invite the opposing party to provide the proof 
required within a time limit specified by the Office. Where the opposing party 
does  not  provide  any  evidence  or  reasons  for  non-use  before  the  time  limit 
expires or where the evidence or reasons provided are manifestly irrelevant or 
manifestly insufficient, the Office shall reject the opposition in so far as it is 
based on that earlier mark.

3. 
The indications and evidence of use shall establish the place, time, extent 
and  nature  of  use  of  the  opposing  trade  mark  for  the  goods  or  services  in 
respect of which it is registered and on which the opposition is based.

4. 
The evidence referred to in paragraph 3 shall be filed in accordance with 
Article 55(2) and Articles 63 and 64 and shall be limited to the submission of 
supporting  documents  and  items  such  as  packages,  labels,  price  lists,  cata-
logues, invoices, photographs, newspaper advertisements, and statements in 
writing as referred to in Article 97(1)(f) of Regulation (EU) 2017/1001.

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5.  A request for proof of use may be filed at the same time as observations 
on the grounds on which the opposition is based. Such observations may also 
be filed together with the observations in reply to the proof of use.

6.  Where the evidence supplied by the opposing party is not in the language 
of  the  opposition  proceedings,  the  Office  may  require  the  opposing  party  to 
submit a translation of that evidence in that language pursuant to Article 24 of 
Implementing Regulation (EU) 2018/626.

7.  Where after the expiry of the time limit referred to in paragraph 2, the 
opposing party submits indications or evidence that supplement relevant indi-
cations  or  evidence  already  submitted  before  expiry  of  that  time  limit  and 
relate to the same requirement laid down in paragraph 3, the Office shall exer-
cise its discretion under Article 95(2) of Regulation (EU) 2017/1001 in deciding 
whether to accept those supplementary indications or evidence. For that pur-
pose, the Office shall take into account, in particular, the stage of proceedings 
and whether the indications or evidence are, prima facie, likely to be relevant 
for the outcome of the case and whether there are valid reasons for the late 
submission of the indications or evidence.

TITLE III 
AMENDMENT OF THE APPLICATION

Article 11
Amendment of the application

1.  A request for amendment of an application pursuant to Article 49(2) of 
Regulation (EU) 2017/1001 shall contain:

(a) 

the file number of the application;

the name and address of the applicant in accordance with Article 2(1)(b) 

(b) 
of Implementing Regulation (EU) 2018/626;

(c)  an indication of the element of the application to be amended, and that 
element in its amended version;

(d)  where the amendment relates to the representation of the mark, a repre-
sentation of the mark as amended, in accordance with Article 3 of Implement-
ing Regulation (EU) 2018/626.

The EC Implementing and Delegated Regulations 199

2.  Where  the  requirements  for  the  amendment  of  the  application  are  not 
fulfilled, the Office shall communicate the deficiency to the applicant and shall 
specify a time limit for remedying the deficiency. Where the applicant does not 
remedy the deficiency within the specified time limit, the Office shall reject the 
request for amendment.

3.  Where the amended trade mark application is published pursuant to Arti-
cle 49(2) of Regulation (EU) 2017/1001, Articles 2 to 10 of this Regulation shall 
apply mutatis mutandis.

4.  A single request for amendment may be made for the amendment of the 
same element in two or more applications by the same applicant.

5. 
Paragraphs  1,  2  and  4  shall  apply  mutatis  mutandis  for  applications  to 
correct the name or the business address of a representative appointed by the 
applicant.

TITLE IV 
REVOCATION AND INVALIDITY OR ASSIGNMENT

Article 12
Application for revocation or for a declaration of invalidity

1.  An application to the Office for revocation or for a declaration of invalidity 
pursuant to Article 63 of Regulation (EU) 2017/1001 shall contain:

EUTMR 
Art. 62

the registration number of the EU trade mark in respect of which revoca-

(a) 
tion or a declaration of invalidity is sought and the name of its proprietor;

(b) 
the grounds on which the application is based by means of a statement 
that the respective requirements laid down in Articles 58, 59, 60, 81, 82, 91 or 
92 of Regulation (EU) 2017/1001 are fulfilled;

(c)  as concerns the applicant:

(i) 

the identification of the applicant in accordance with Article 2(1)(b) 
of Implementing Regulation (EU) 2018/626;

(ii)  where  the  applicant  has  appointed  a  representative  or  where  rep-
resentation  is  mandatory  within  the  meaning  of  Article  119(2)  of 
Regulation (EU) 2017/1001, the name and business address of the 

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Commission  DelegateD Regulation  (eu) 2018/625

representative,  in  accordance  with  Article  2(1)(e)  of  Implementing 
Regulation (EU) 2018/626;

(d)  an indication of the goods or services in respect of which revocation or 
a  declaration  of  invalidity  is  sought,  in  the  absence  of  which  the  application 
shall be deemed to be directed against all the goods or services covered by the 
contested EU trade mark.

2. 
In addition to the requirements laid down in paragraph 1, an application for 
a declaration of invalidity based on relative grounds shall contain the following:

(a) 
in the case of an application pursuant to Article 60(1) of Regulation (EU) 
2017/1001,  an  identification  of  the  earlier  right  on  which  the  application  is 
based, in accordance with Article 2(2)(b) of this Regulation, which shall apply 
mutatis mutandis to such an application;

(b) 
in the case of an application pursuant to Article 60(2) of Regulation (EU) 
2017/1001, an indication of the nature of the earlier right on which the applica-
tion is based, its representation and an indication of whether this earlier right 
exists in the whole of the Union or in one or more Member States, and if so, an 
indication of those Member States;

(c)  particulars pursuant to Article 2(2)(d) to (g) of this Regulation, which apply 
mutatis mutandis to such an application;

(d)  where the application is entered by a licensee or by a person who is enti-
tled  under  the  relevant  Union  legislation  or  national  law  to  exercise  an  ear-
lier right, an indication concerning the authorisation or entitlement to file the 
application.

3.  Where the application for a declaration of invalidity pursuant to Article 60 
of Regulation (EU) 2017/1001 is based on more than one earlier mark or earlier 
right, paragraphs 1(b) and 2 of this Article shall apply for each of those marks 
or rights.

The application may contain a reasoned statement on the grounds setting 

4. 
out the facts and arguments on which it is based and supporting evidence.

Article 13
Languages used in revocation or invalidity proceedings

EUTMDR 
Art. 12

The applicant for revocation or for a declaration of invalidity or the proprietor 
of the EU trade mark may inform the Office before the expiry of a period of 
two months of receipt by the EU trade mark proprietor of the communication 

The EC Implementing and Delegated Regulations 201

referred to in Article 17(1), that a different language of proceedings has been 
agreed  pursuant  to  Article  146(8)  of  Regulation  (EU)  2017/1001.  Where  the 
application  has  not  been  filed  in  that  language,  the  proprietor  may  request 
that the applicant file a translation in that language. Such a request shall be 
received by the Office before the expiry of the period of two months of receipt 
by  the  EU  trade  mark  proprietor  of  the  communication  referred  to  in  Article 
17(1). The Office shall specify a time limit for the applicant to file such a trans-
lation.  Where  that  translation  is  not  filed  or  filed  late,  the  language  of  the 
proceedings shall remain unchanged.

Article 14
Information to the parties concerning an application for revocation or for 
a declaration of invalidity

An application for revocation or for a declaration of invalidity and any docu-
ment  submitted  by  the  applicant,  as  well  as  any  communication  addressed 
to one of the parties by the Office prior to the finding on admissibility shall 
be sent by the Office to the other party for the purposes of informing of the 
introduction of an application for revocation or for a declaration of invalidity.

EUTMDR 
Art. 15

Article 15
Admissibility of an application for revocation or for a declaration of 
invalidity

1.  Where the fee required under Article 63(2) of Regulation (EU) 2017/1001 
has not been paid, the Office shall invite the applicant to pay the fee within 
a period specified by it. Where the required fee is not paid within the specified 
period, the Office shall inform the applicant that the application for revocation 
or for a declaration of invalidity is deemed not to have been entered. Where the 
fee has been paid after the expiry of the specified period, it shall be refunded 
to the applicant.

EUTMIR 
Art. 25 

2.  Where the application has been filed in a language which is not one of 
the languages of the Office as required under Article 146(5) of Regulation (EU) 
2017/1001, or it does not comply with Article 12(1)(a) or (b) or, where applica-
ble, Article 12(2)(a) or (b) of this Regulation, the Office shall reject the applica-
tion as inadmissible.

3.  Where the translation required under the second subparagraph of Article 
146(7) Regulation (EU) 2017/1001 is not filed within a period of one month of 
the date of filing an application for revocation or a declaration of invalidity, the 
Office shall reject the application for revocation or for a declaration of invalid-
ity as inadmissible.

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Commission  DelegateD Regulation  (eu) 2018/625

4.  Where the application does not comply with the provisions laid down in 
Article  12(1)(c),  Article  12(2)(c)  or  (d),  the  Office  shall  inform  the  applicant 
accordingly  and  shall  invite  the  applicant  to  remedy  the  deficiencies  noted 
within a period of two months. If the deficiencies are not remedied before the 
time limit expires, the Office shall reject the application as inadmissible.

The Office shall notify the applicant and the proprietor of the EU trade 
5. 
mark of any finding pursuant to paragraph 1 that the application for revocation 
or a declaration of invalidity is deemed not to have been entered and of any 
decision to reject the application for revocation or a declaration of invalidity on 
the grounds of inadmissibility under paragraphs 2, 3 or 4. Where an application 
for revocation or a declaration of invalidity is rejected in its entirety as inadmis-
sible pursuant to paragraphs 2, 3 or 4, prior to the notification of Article 17(1), 
no decision on costs shall be taken.

Article 16
Substantiation of an application for revocation or for a declaration of 
invalidity

EUTMDR 
Art. 55 
EUTMIR 
Art. 25 

The applicant shall present the facts, evidence and arguments in support 
1. 
of  the  application  up  to  the  closure  of  the  adversarial  part  of  revocation  or 
invalidity proceedings. In particular, the applicant shall provide the following:

in the case of an application pursuant to Article 58(1)(b) or (c) or Article 59 
(a) 
of Regulation (EU) 2017/1001, facts, arguments and evidence to support the 
grounds on which the application for revocation or a declaration of invalidity is 
based;

in the case of an application pursuant to Article 60(1) of Regulation (EU) 
(b) 
2017/1001,  the  evidence  required  by  Article  7(2)  of  this  Regulation  and  the 
provisions of Article 7(3) shall apply mutatis mutandis;

in the case of an application pursuant to Article 60(2) of Regulation (EU) 
(c) 
2017/1001, evidence of acquisition, continued existence and scope of protec-
tion of the relevant earlier right as well as evidence proving that the applicant 
is entitled to file the application, including, where the earlier right is invoked 
pursuant to the law of a Member State, a clear identification of the content 
of the national law relied upon by adducing publications of the relevant provi-
sions or jurisprudence. Where the evidence concerning the filing or registration 
of an earlier right under Article 60(2)(d) of Regulation (EU) 2017/1001 or the 
evidence  concerning  the  contents  of  the  relevant  national  law  is  accessible 
online from a source recognised by the Office, the applicant may provide such 
evidence by making reference to that source.

The EC Implementing and Delegated Regulations 203

2. 
Evidence  concerning  the  filing,  registration  or  renewal  of  earlier  rights 
or,  where  applicable,  the  content  of  the  relevant  national  law,  including  evi-
dence accessible online, as referred to in paragraph 1(b) and (c), shall be filed 
in the language of the proceedings or shall be accompanied by a translation 
into that language. The translation shall be submitted by the applicant of the 
applicant’s own motion within one month from the filing of such evidence. Any 
other evidence submitted by the applicant to substantiate the application or, in 
case of an application for revocation under Article 58(1)(a) of Regulation (EU) 
2017/1001, by the proprietor of the contested EU trade mark, shall be subject 
to Article 24 of Implementing Regulation (EU) 2018/626. Translations submit-
ted after the expiry of the relevant time limits shall not be taken into account.

Article 17
Examination on the merits of an application for revocation or for 
a declaration of invalidity

1.  Where  the  application  is  found  admissible  pursuant  to  Article  15,  the 
Office  shall  send  a  communication  to  the  parties  informing  them  that  the 
adversarial  part  of  the  revocation  or  invalidity  proceedings  has  commenced 
and  inviting  the  proprietor  of  the  EU  trade  mark  to  file  observations  within 
a specified period.

EUTMR 
Art. 49, 52, 
53

2.  Where the Office has invited a party in accordance with Article 64(1) of 
Regulation (EU) 2017/1001 to file observations within a specified period and 
that party does not submit any observations within that period, the Office shall 
close the adversarial part of the proceedings and base its ruling on the revoca-
tion or invalidity on the basis of the evidence before it.

3.  Where the applicant has not submitted the facts, arguments or evidence 
required  to  substantiate  the  application,  the  application  shall  be  rejected  as 
unfounded.

4.  Without prejudice to Article 62, all observations filed by the parties shall 
be sent to the other party concerned.

5.  Where the proprietor surrenders the EU trade mark subject to an applica-
tion as referred to in Article 12 to cover only goods or services against which 
the application is not directed, or the EU trade mark is revoked or declared inva-
lid in parallel proceedings, or expires, the proceedings shall be closed except 
where Article 57(2) of Regulation (EU) 2017/1001 shall apply or the applicant 
shows a legitimate interest in obtaining a decision on the merits.

6.  Where the proprietor partially surrenders the EU trade mark by deleting 
some  of  the  goods  or  services  against  which  the  application  is  directed,  the 

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Commission  DelegateD Regulation  (eu) 2018/625

Office shall invite the applicant to state, within such a period as it may specify, 
whether it maintains the application and if so, against which of the remaining 
goods or services. Where the applicant withdraws the application in light of the 
surrender, or the Office is informed about a settlement between the parties, 
the proceedings shall be closed.

7.  Where the proprietor wishes to surrender the contested EU trade mark, it 
shall do so by way of a separate document.

8.  Article 8(9) shall apply mutatis mutandis.

Article 18
Multiple applications for revocation or for a declaration of invalidity

EUTMR 
Art. 64 
EUTMDR 
Art. 12, 17

1.  Where  a  number  of  applications  for  revocation  or  for  a  declaration  of 
invalidity have been filed relating to the same EU trade mark, the Office may 
examine them in one set of proceedings. The Office may subsequently decide 
to examine those applications separately.

2.  Article 9(2), (3) and (4) shall apply mutatis mutandis.

Article 19
Proof of use in relation to an application for revocation or for 
a declaration of invalidity

EUTMR 
Art. 18, 
146 
EUTMDR 
Art. 55

1. 
In the case of an application for revocation based on Article 58(1)(a) of 
Regulation  (EU)  2017/1001,  the  Office  shall  invite  the  proprietor  of  the  EU 
trade mark to provide proof of genuine use of that mark or of proper reasons 
for non-use, within such period as it shall specify. Where the proprietor does 
not provide any evidence of genuine use or of reasons for non-use before the 
time limit expires or the evidence or reasons provided are manifestly irrelevant 
or manifestly insufficient, the EU trade mark shall be revoked. Article 10(3), (4), 
(6) and (7) of this Regulation shall apply mutatis mutandis.

2.  A request for proof of use pursuant to Article 64(2) or (3) of Regulation 
(EU) 2017/1001 shall be admissible if the proprietor of the EU trade mark sub-
mits it as an unconditional request in a separate document within the period 
specified by the Office pursuant to Article 17(1) of this Regulation. Where the 
proprietor  of  the  EU  trade  mark  has  made  a  request  for  proof  of  use  of  an 
earlier mark or of proper reasons for non-use which complies with the require-
ments  of  Article  64(2)  or  (3)  of  Regulation  (EU)  2017/1001,  the  Office  shall 
invite the applicant for a declaration of invalidity to provide the proof required 
within a time limit specified by the Office. Where the applicant for a declara-
tion of invalidity does not provide any evidence of genuine use or of reasons 

The EC Implementing and Delegated Regulations 205

for non-use before the time limit expires or the evidence or reasons provided 
are manifestly irrelevant or manifestly insufficient, the Office shall reject the 
application for a declaration of invalidity in so far as it is based on that earlier 
mark. Article 10(3) to (7) of this Regulation shall apply mutatis mutandis.

Article 20
Request for assignment

1.  Where the proprietor of a trade mark requests, in accordance with Article 
21(1) and (2)(a) of Regulation (EU) 2017/1001, an assignment instead of a dec-
laration of invalidity, the provisions of Articles 12 to 19 of this Regulation shall 
apply mutatis mutandis.

EUTMR 
Art. 111, 
116 
EUTMIR 
Art. 14 

2.  Where  a  request  for  assignment  pursuant  to  Article  21(2)  of  Regula-
tion (EU) 2017/1001 is partially or totally granted by the Office or by an EU 
trade mark court and the decision or judgment has become final, the Office 
shall ensure that the resulting partial or total transfer of the EU trade mark is 
entered in the Register and published.

TITLE V 
APPEALS

Article 21
Notice of appeal

1.  A notice of appeal filed in accordance with Article 68(1) of Regulation (EU) 
2017/1001 shall contain the following:

the name and address of the appellant in accordance with Article 2(1)(b) 

(a) 
of Implementing Regulation (EU) 2018/626;

(b)  where  the  appellant  has  appointed  a  representative,  the  name  and  the 
business  address  of  the  representative  in  accordance  with  Article  2(1)(e)  of 
Implementing Regulation (EU) 2018/626;

EUTMR 
Art. 66, 67, 
101, 146 
EUTMDR 
Art. 23, 65, 
67 
EUTMIR 
Art. 24-26 

(c)  where  representation  of  the  appellant  is  mandatory  pursuant  to  Article 
119(2) of Regulation (EU) 2017/1001, the name and the business address of 
the representative in accordance with Article 2(1)(e) of Implementing Regula-
tion (EU) 2018/626;

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(d)  a clear and unambiguous identification of the decision subject to appeal 
indicating the date on which it was issued and the file number of the proceed-
ings to which the decision subject to appeal relates;

(e)  where the decision subject to appeal is only contested in part, a clear and 
unambiguous  identification  of  the  goods  or  services  in  respect  of  which  the 
decision subject to appeal is contested.

2.  Where  the  notice  of  appeal  is  filed  in  another  official  language  of  the 
Union than the language of proceedings, the appellant shall provide a trans-
lation  thereof  within  four  months  of  the  date  of  notification  of  the  decision 
subject to appeal.

3.  Where  in  ex  parte  proceedings  the  decision  subject  to  appeal  has  been 
taken  in  an  official  language  other  than  the  language  of  proceedings,  the 
appellant may file the notice of appeal either in the language of the proceed-
ings or in the language in which the decision subject to appeal was taken; in 
either case, the language used for the notice of appeal shall become the lan-
guage of the appeal proceedings and paragraph 2 shall not apply.

4.  As soon as the notice of appeal has been filed in inter partes proceedings, 
it shall be notified to the defendant.

Article 22
Statement of grounds

EUTMR 
Art. 101, 
146 
EUTMDR 
Art. 23 
EUTMIR 
Art. 24-26 

1.  A statement setting out the grounds of appeal filed pursuant to the fourth 
sentence of Article 68(1) of Regulation (EU) 2017/1001 shall contain a clear 
and unambiguous identification of the following:

(a) 
the appeal proceedings to which it refers by indicating either the corre-
sponding appeal number or the decision subject to appeal in accordance with 
the requirements laid down in Article 21(1)(d) of this Regulation;

(b) 
the grounds of appeal on which the annulment of the contested decision 
is requested within the extent identified in accordance with Article 21(1)(e) of 
this Regulation;

the  facts,  evidence  and  arguments  in  support  of  the  grounds  invoked, 

(c) 
submitted in accordance with the requirements set out in Article 55(2).

The  statement  of  grounds  shall  be  filed  in  the  language  of  the  appeal 
2. 
proceedings as determined in accordance with Article 21(2) and (3). Where the 
statement  of  grounds  is  filed  in  another  official  language  of  the  Union,  the 

The EC Implementing and Delegated Regulations 207

appellant shall provide a translation thereof within one month of the date of 
the submission of the original statement.

Article 23
Admissibility of an appeal

The Board of Appeal shall reject an appeal as inadmissible in any of the 

1. 
following events:

EUTMR 
Art. 70, 71

(a)  where the notice of appeal has not been filed within two months of the 
date of notification of the decision subject to appeal;

(b)  where the appeal does not comply with Articles 66 and 67 of Regulation 
(EU)  2017/1001,  or  with  those  laid  down  in  Article  21(1)(d)  and  Article  21(2) 
and (3) of this Regulation, unless those deficiencies are remedied within four 
months of the date of notification of the decision subject to appeal;

(c)  where the notice of appeal does not comply with the requirements laid 
down in Article 21(1)(a), (b), (c) and (e), and the appellant has, despite having 
been informed thereof by the Board of Appeal, not remedied those deficiencies 
within the time limit specified by the Board of Appeal to that effect;

(d)  where the statement of grounds has not been filed within four months of 
the date of notification of the decision subject to appeal;

(e)  where the statement of grounds does not comply with the requirements 
laid down in Article 22(1)(a) and (b), and the appellant has, despite having been 
informed thereof by the Board of Appeal, not remedied those deficiencies within 
the time limit specified by the Board of Appeal to that effect or has not submit-
ted the translation of the statement of grounds within one month of the date of 
the submission of the original statement in accordance with Article 22(2).

2.  Where  the  appeal  appears  to  be  inadmissible,  the  chairperson  of  the 
Board of Appeal to which the case has been allocated pursuant to Article 35(1) 
may request the Board of Appeal to decide without delay on the admissibility 
of the appeal prior to the notification to the defendant of the notice or of the 
statement of grounds, as the case may be.

3. 
The Board of Appeal shall declare an appeal as deemed not to have been 
filed where the appeal fee has been paid after the expiry of the time limit set 
out in the first sentence of Article 68(1) of Regulation (EU) 2017/1001. In such 
a case, paragraph 2 of this Article shall apply.

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Article 24
Response

EUTMR 
Art. 67, 68, 
101

1. 
In inter partes proceedings, the defendant may file a response within two 
months of the date of notification of the appellant’s statement of grounds. In 
exceptional  circumstances,  that  time  limit  may  be  extended  upon  reasoned 
request by the defendant.

2. 
The  response  shall  contain  the  name  and  address  of  the  defendant  in 
accordance with Article 2(1)(b) of Implementing Regulation (EU) 2018/626 and 
shall comply, mutatis mutandis, with the conditions laid down in Article 21(1)
(b), (c) and (d), Article 22(1)(a) and (c) and Article 22(2) of this Regulation.

Article 25
Cross appeal

EUTMR 
Art. 101, 
146 
EUTMIR 
Art. 24-26 

1.  Where the defendant seeks a decision annulling or altering the contested 
decision on a point not raised in the appeal, pursuant to Article 68(2) of Regu-
lation (EU) 2017/1001, that cross appeal shall be filed within the time limit for 
filing a response in accordance with Article 24(1) of this Regulation.

2.  A  cross  appeal  shall  be  submitted  by  a  document  separate  from  the 
response.

3. 
The cross appeal shall contain the name and address of the defendant in 
accordance with Article 2(1)(b) of Implementing Regulation (EU) 2018/626 and 
shall comply mutatis mutandis with the conditions laid down in Article 21(1)(b) 
to (e) and Article 22 of this Regulation.

4.  A cross appeal shall be rejected as inadmissible in any of the following 
events:

(a)  where it has not been filed within the time limit laid down in paragraph 1;

(b)  where it has not been filed in observance of the requirements laid down 
either in paragraph 2 or Article 21(1)(d);

(c)  where it does not comply with the requirements referred to in paragraph 
3, and the defendant has, despite having been informed thereof by the Board 
of Appeal, not remedied these deficiencies within the time limit specified by the 
Board of Appeal to that effect or has not submitted the translation of the cross 
appeal and the corresponding statement of grounds within one month of the 
date of submission of the original.

The EC Implementing and Delegated Regulations 209

5. 
The appellant shall be invited to submit observations on the defendant’s 
cross  appeal  within  two  months  of  the  date  of  notification  to  the  appellant. 
In  exceptional  circumstances,  that  time  limit  may  be  extended  by  the  Board 
of Appeal upon the reasoned request of the appellant. Article 26 shall apply 
mutatis mutandis.

Article 26
Reply and rejoinder in inter partes proceedings

1.  Upon the appellant’s reasoned request filed within two weeks of the noti-
fication of the response, the Board of Appeal may, pursuant to Article 70(2) of 
Regulation (EU) 2017/1001, authorise the appellant to supplement the state-
ment of grounds with a reply within a period specified by the Board of Appeal.

EUTMR 
Art. 101

2. 
In such a case, the Board of Appeal shall also authorise the defendant to 
supplement the response with a rejoinder within a period specified by the Board 
of Appeal.

Article 27
Examination of the appeal

1. 
In ex parte proceedings, and with respect to those goods or services which 
form part of the subject matter of the appeal, the Board of Appeal, in compli-
ance with Article 45(3) of Regulation (EU) 2017/1001, shall proceed in accord-
ance with Article 42 of Regulation (EU) 2017/1001 where it raises a ground for 
refusal of the trade mark application which had not already been invoked in the 
decision subject to appeal in application of that provision.

EUTMR 
Art. 70, 71 
EUTMDR 
Art. 22, 25 
EUTMIR 
Art. 2, 8, 
11, 15 

In  inter  partes  proceedings,  the  examination  of  the  appeal  and,  as  the 
2. 
case may be, the cross appeal, shall be restricted to the grounds invoked in the 
statement of grounds and, as the case may be, in the cross appeal. Matters of 
law not raised by the parties shall be examined by the Board of Appeal only 
where  they  concern  essential  procedural  requirements  or  where  it  is  neces-
sary to resolve them in order to ensure a correct application of Regulation (EU) 
2017/1001 having regard to the facts, evidence and arguments presented by 
the parties.

The  examination  of  the  appeal  shall  include  the  following  claims  or 
3. 
requests provided that they have been raised in the statement of grounds of 
the appeal or, as the case may be, in the cross appeal and provided that they 
were raised in due time in the proceedings before the instance of the Office 
which adopted the decision subject to appeal:

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(a)  distinctiveness acquired through use as referred to in Article 7(3) and Arti-
cle 59(2) of Regulation (EU) 2017/1001;

recognition of the earlier trade mark on the market acquired through use 

(b) 
for the purposes of Article 8(1)(b) of Regulation (EU) 2017/1001;

(c)  proof of use pursuant to Article 47(2) and (3) of Regulation (EU) 2017/1001 
or Article 64(2) and (3) of Regulation (EU) 2017/1001.

4. 
In accordance with Article 95(2) of Regulation (EU) 2017/1001, the Board 
of Appeal may accept facts or evidence submitted for the first time before it 
only where those facts or evidence meet the following requirements:

they are, on the face of it, likely to be relevant for the outcome of the case; 

(a) 
and

(b) 
they have not been produced in due time for valid reasons, in particular 
where they are merely supplementing relevant facts and evidence which had 
already been submitted in due time, or are filed to contest findings made or 
examined  by  the  first  instance  of  its  own  motion  in  the  decision  subject  to 
appeal.

5. 
The Board of Appeal shall, at the latest in its decision on the appeal and, 
as the case may be, the cross appeal, decide on requests for restriction, division 
or partial surrender of the contested mark declared during the appeal proceed-
ings by the applicant or the proprietor in accordance with Articles 49, 50 or 57 
of Regulation (EU) 2017/1001. Where the Board of Appeal accepts the restric-
tion, division or partial surrender, it shall without delay inform the department 
in charge of the Register and the departments dealing with parallel proceed-
ings involving the same mark accordingly.

Article 28
Communications by the Board of Appeal

EUTMR 
Art. 70 
EUTMDR 
Art. 40, 41

1.  Communications by the Board of Appeal in the course of the examination 
of the appeal or with a view to facilitating an amicable settlement of proceed-
ings shall be prepared by the rapporteur and shall be signed by the rapporteur 
on  behalf  of  the  Board  of  Appeal,  in  agreement  with  the  chairperson  of  the 
Board of Appeal.

2.  Where  a  Board  of  Appeal  communicates  with  the  parties  regarding  its 
provisional opinion on matters of fact or law, it shall state that it is not bound 
by such a communication.

The EC Implementing and Delegated Regulations 211

Article 29
Comments on questions of general interest

The Board of Appeal may, on its own initiative or upon the written, reasoned 
request of the Executive Director of the Office, invite the Executive Director to 
comment on questions of general interest which arise in the course of proceed-
ings pending before it. The parties shall be entitled to submit their observations 
on the Executive Director’s comments.

EUTMR 
Art. 157

Article 30
Reopening of the examination of absolute grounds

1.  Where,  in  ex  parte  proceedings,  the  Board  of  Appeal  considers  that  an 
absolute  ground  for  refusal  may  be  applicable  to  goods  or  services  listed  in 
the trade mark application which do not form part of the subject matter of the 
appeal, it shall inform the examiner competent for examining that application 
who may decide to reopen the examination pursuant to Article 45(3) of Regula-
tion (EU) 2017/1001 with respect to those goods or services.

EUTMDR 
Art. 71

2.  Where a decision of the Opposition Division is subject to an appeal, the 
Board  of  Appeal  may,  by  means  of  a  reasoned  interim  decision  and  without 
prejudice  to  Article  66(1)  of  Regulation  (EU)  2017/1001,  suspend  the  appeal 
proceedings  and  remit  the  contested  application  to  the  examiner  competent 
for examining that application with a recommendation to reopen the examina-
tion pursuant to Article 45(3) of Regulation (EU) 2017/1001, where it considers 
that an absolute ground for refusal shall apply to some or all of the goods or 
services listed in the trade mark application.

3.  Where the contested application has been remitted in application of para-
graph 2, the examiner shall inform the Board of Appeal without delay whether 
or not the examination of the contested application has been reopened. Where 
the examination has been reopened, the appeal proceedings shall remain sus-
pended until the examiner’s decision has been taken and, where the contested 
application is rejected in whole or in part, until the examiner’s decision to this 
effect has become final.

Article 31
Examination of an appeal as a matter of priority

1.  Upon  reasoned  request  of  the  appellant  or  of  the  defendant  and  after 
hearing the other party, the Board of Appeal may decide, having regard to the 
particular urgency and the circumstances of the case, to examine the appeal 
as a matter of priority, without prejudice to the provisions in Articles 23 and 26, 
including the provisions on time limits.

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2. 
The request for the examination of the appeal as a matter of priority may 
be filed at any time in the course of the appeal proceedings. It shall be filed in 
a separate document and shall be supported by evidence as to the urgency and 
the particular circumstances of the case.

Article 32
Formal content of the Board of Appeal’s decision

The Board of Appeal’s decision shall contain:

(a)  a statement that it is delivered by the Boards of Appeal;

(b) 

the date when the decision was taken;

(c) 

the names of the parties and of their representatives;

EUTMR 
Art. 71, 
109, 110, 
165, 166 
EUTMIR 
Art. 18 

(d) 
the number of the appeal to which it refers and an identification of the 
decision subject to  appeal in accordance  with the  requirements laid  down in 
Article 21(1)(d);

(e)  an indication as to the formation of the Board of Appeal;

(f) 
the  name  and,  without  prejudice  to  Article  39(5),  the  signature  of  the 
chairperson and members who took part in the decision, including an indication 
of who acted as rapporteur in the case, or, where the decision is delivered by 
a single member, the name and signature of the member who took the decision;

the name and the signature of the Registrar or, as the case may be, of the 

(g) 
member of the Registry signing on the Registrar’s behalf;

(h)  a summary of the facts and of the arguments submitted by the parties;

(i) 

a statement of the reasons for which the decision has been taken;

the order of the Board of Appeal, including, where necessary, a decision on 

(j) 
costs.

Article 33
Reimbursement of the appeal fee

The appeal fee shall be reimbursed by order of the Board of Appeal in either of 
the following events:

EUTMR 
Art. 108 
EUTMDR 
Art. 34, 70

The EC Implementing and Delegated Regulations 213

(a)  where the appeal is not deemed to have been filed in accordance with the 
second sentence of Article 68(1) of Regulation (EU) 2017/1001;

(b)  where the decision-making instance of the Office which adopted the con-
tested  decision  grants  revision  pursuant  to  Article  69(1)  of  Regulation  (EU) 
2017/1001 or revokes the contested decision in application of Article 103 of 
Regulation (EU) 2017/1001;

(c)  where,  following  reopening  of  the  examination  proceedings  within  the 
meaning  of  Article  45(3)  of  Regulation  (EU)  2017/1001  upon  the  Board  of 
Appeal’s recommendation pursuant to Article 30(2) of this Regulation, the con-
tested application has been rejected by final decision of the examiner and the 
appeal has become devoid of purpose as a consequence thereof;

(d)  where  the  Board  of  Appeal  considers  such  reimbursement  equitable  by 
reason of a substantial procedural violation.

Article 34
Revision and revocation of the decision subject to appeal

1.  Where,  in  ex  parte  proceedings,  the  appeal  is  not  rejected  pursuant  to 
Article  23(1),  the  Board  of  Appeal  shall  submit  the  notice  of  appeal  and  the 
statement of grounds of appeal to the instance of the Office which adopted the 
contested decision for the purposes of Article 69 of Regulation (EU) 2017/1001.

EUTMDR 
Art. 33, 70

2.  Where the instance of the Office which adopted the decision subject to 
appeal decides to grant revision pursuant to Article 69(1) of Regulation (EU) 
2017/1001, it shall inform the Board of Appeal thereof without delay.

3.  Where the instance of the Office which adopted the decision subject to 
appeal has initiated the procedure for revoking the decision subject to appeal 
pursuant  to  Article  103(2)  of  Regulation  (EU)  2017/1001,  it  shall  inform  the 
Board of Appeal thereof without delay for the purposes of Article 71 of this 
Regulation. It shall also inform the Board of Appeal without delay about the 
final outcome of that procedure.

Article 35
Allocation of an appeal to a Board and designation of a rapporteur

1.  As soon as the notice of appeal has been filed, the President of the Boards 
shall allocate the case to a Board of Appeal according to the objective criteria 
determined  by  the  Presidium  of  the  Boards  of  Appeal  referred  to  in  Article 
166(4)(c) of Regulation (EU) 2017/1001.

EUTMR 
Art. 167 
EUTMDR 
Art. 37, 40, 
41, 45, 46

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2. 
For each case allocated to a Board of Appeal pursuant to paragraph 1, its 
chairperson shall designate a member of that Board of Appeal, or the chairper-
son, as rapporteur.

3.  Where a case falls under the authority of a single member pursuant to 
Article 36(1), the Board of Appeal handling a case shall designate the rappor-
teur as single member pursuant to Article 165(5) of Regulation (EU) 2017/1001.

4.  Where a decision of  a Board of  Appeal on a  case  has been  annulled or 
altered by a final ruling of the General Court or, as the case may be, of the Court 
of Justice, the President of the Boards of Appeal shall, with a view to complying 
with that ruling in accordance with Article 72(6) of Regulation (EU) 2017/1001, 
reallocate the case pursuant to paragraph 1 of this Article to a Board of Appeal, 
which shall not comprise those members who had adopted the annulled deci-
sion, except where the case is referred to the enlarged Board of Appeal (‘Grand 
Board’) or where the annulled decision had been taken by the Grand Board.

5.  Where several appeals are filed against the same decision, those appeals 
shall be considered in the same proceedings. Where appeals involving the same 
parties are filed against separate decisions concerning the same mark, or have 
other  relevant  factual  or  legal  elements  in  common,  those  appeals  may  be 
considered in joined proceedings with the consent of the parties.

Article 36
Cases falling under the authority of a single member

EUTMIR 
Art. 18 

1. 
The Board of Appeal handling the case may designate a single member 
within the meaning of Article 165(2) of Regulation (EU) 2017/1001 for the pur-
poses of the following decisions:

(a)  decisions pursuant to Article 23;

(b)  decisions closing the appeal proceedings following withdrawal, rejection, 
surrender or cancellation of the contested or the earlier mark;

(c)  decisions  closing  the  appeal  proceedings  following  withdrawal  of  the 
opposition, of the request for revocation or for a declaration of invalidity or of 
the appeal;

(d)  decisions  on  measures  pursuant  to  Article  102(1)  and  Article  103(2)  of 
Regulation (EU) 2017/1001, provided that the correction or, as the case may 
be, the revocation of the decision on the appeal concerns a decision taken by 
a single member;

The EC Implementing and Delegated Regulations 215

(e)  decisions pursuant to Article 104(4) of Regulation (EU) 2017/1001;

(f)  decisions  pursuant  to  Article  109(4),  (5)  and  (8)  of  Regulation  (EU) 
2017/1001;

(g)  decisions on appeals against decisions in ex parte proceedings taken on 
the  grounds  laid  down  in  Article  7  of  Regulation  (EU)  2017/1001,  which  are 
either manifestly unfounded or manifestly well founded.

2.  Where the single member considers that the conditions set out in para-
graph 1 or in Article 165(5) of Regulation (EU) 2017/1001 are not, or no longer, 
met, the single member shall refer the case back to the Board of Appeal in its 
composition of three members by submitting a draft decision pursuant to Arti-
cle 41 of this Regulation.

Article 37
Referral to the Grand Board

1.  Without prejudice to the faculty to refer a case to the Grand Board under 
Article  165(3)  of  Regulation  (EU)  2017/1001,  a  Board  of  Appeal  shall  refer 
a case allocated to it to the Grand Board if it considers that it must deviate 
from an interpretation of the relevant legislation given in an earlier decision of 
the Grand Board, or if it observes that the Boards of Appeal have issued diverg-
ing decisions on a point of law which is liable to affect the outcome of the case.

EUTMR 
Art. 116, 
167 
EUTMDR 
Art. 45

2.  All decisions on referrals of appeal cases to the Grand Board shall state 
the reasons for which the referring Board of Appeal or, as the case may be, 
the Presidium of the Boards of Appeal considers that this is justified, shall be 
communicated to the parties to the case and shall be published in the Official 
Journal of the Office.

3. 
The Grand Board shall, without delay, refer the case back to the Board of 
Appeal to which it was originally allocated if it believes that the conditions for 
the original referral are not, or no longer, met.

4. 
Requests for a reasoned opinion on questions on a point of law pursuant 
to Article 157(4)(l) of Regulation (EU) 2017/1001 shall be referred to the Grand 
Board in writing, shall state the questions of law of which the interpretation 
is  sought,  and  may  also  state  the  Executive  Director’s  view  on  the  different 
possible interpretations as well as on their respective legal and practical con-
sequences. The request shall be published in the Official Journal of the Office.

5.  Where a Board of Appeal has to decide, in a case pending before it, on the 
same point in law that has already been raised in a referral to the Grand Board 

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pursuant to Article 165(3) or Article 157(4)(l) of Regulation (EU) 2017/1001, it 
shall suspend the proceedings until the Grand Board has taken its decision or 
delivered its reasoned opinion.

6.  Groups or bodies representing manufacturers, producers, suppliers of ser-
vices,  traders  or  consumers  which  can  establish  an  interest  in  the  result  of 
a case on appeal or a request for a reasoned opinion brought before the Grand 
Board, may submit written observations within two months following the pub-
lication in the Official Journal of the Office of the decision of referral or, as the 
case may be, the request for a reasoned opinion. They shall not be parties to 
the proceedings before the Grand Board and shall bear their own costs.

Article 38
Change in the composition of a Board

EUTMDR 
Art. 49

1.  Where,  after  oral  proceedings,  the  composition  of  a  Board  of  Appeal  is 
changed pursuant to Article 43(2) and (3), all parties to the proceedings shall 
be informed that, at the request of any party, fresh oral proceedings shall be 
held before the Board of Appeal in its new composition. Fresh oral proceedings 
shall also be held if the new member so requests and provided that the other 
members of the Board of Appeal have given their agreement.

The new member of a Board of Appeal shall be bound to the same extent 

2. 
as the other members by any interim decision which has already been taken.

Article 39
Deliberation, voting and signing of decisions

EUTMR 
Art. 71 
EUTMDR 
Art. 41

The rapporteur shall submit to the other members of the Board of Appeal 
1. 
a draft of the decision to be taken and shall set a reasonable time limit within 
which to oppose it or to ask for changes.

The Board of Appeal shall meet to deliberate on the decision to be taken if 
2. 
it appears that its members are not all of the same opinion. Only members of 
the Board of Appeal shall participate in the deliberations; the chairperson of the 
Board of Appeal may, however, authorise other officers such as the Registrar or 
interpreters to attend. Deliberations shall be and remain secret.

3.  During the deliberations between members of a Board of Appeal, the opin-
ion of the rapporteur shall be heard first, and, if the rapporteur is not the chair-
person, the opinion of the chairperson shall be heard last.

4. 
If  voting  is  necessary,  votes  shall  be  taken  in  the  same  sequence,  save 
that the chairperson shall always vote last. Abstentions shall not be permitted.

The EC Implementing and Delegated Regulations 217

5.  All  members  of  the  Board  of  Appeal  taking  the  decision  shall  sign  it. 
However, where the Board of Appeal has already reached a final decision and 
a member is unable to act, that member shall not be replaced and the chair-
person shall sign the decision on the member’s behalf. Where the chairperson 
is  unable  to  act,  the  most  senior  member  of  the  Board  of  Appeal  as  deter-
mined in accordance with Article 43(1) shall sign the decision on behalf of the 
chairperson.

6. 
Paragraphs 1 to 5 shall not apply where a decision is to be taken by a sin-
gle member pursuant to Article 165(2) of Regulation (EU) 2017/1001 and Arti-
cle  36(1)  of  this  Regulation.  In  such  cases,  decisions  shall  be  signed  by  the 
single member.

Article 40
Chairperson of a Board of Appeal

A chairperson shall preside over a Board of Appeal and shall have the following 
duties:

(a)  designate a member of the Board of Appeal, or himself or herself, as rap-
porteur  for  each  case  allocated  to  that  Board  of  Appeal  in  accordance  with 
Article 35(2);

(b)  designate,  on  behalf  of  the  Board  of  Appeal,  the  rapporteur  as  single 
member pursuant to Article 165(2) of Regulation (EU) 2017/1001;

request the Board of Appeal to decide on the admissibility of the appeal in 

(c) 
accordance with Article 23(2) of this Regulation;

(d)  direct the preparatory examination of the case carried out by the rappor-
teur in accordance with Article 41 of this Regulation;

(e)  preside  over,  and  sign  the  minutes  of,  oral  hearings  and  the  taking  of 
evidence.

Article 41
Rapporteur to a Board of Appeal

EUTMR 
Art. 166 
EUTMDR 
Art. 43, 49

1. 
The rapporteur shall carry out a preliminary study of the appeal assigned 
to  the  rapporteur,  prepare  the  case  for  examination  and  deliberation  by  the 
Board of Appeal, and draft the decision to be taken by the Board of Appeal.

To that effect, the rapporteur shall, where necessary and subject to the 

2. 
direction of the chairperson of the Board of Appeal, have the following duties:

EUTMR 
Art. 166 
EUTMDR 
Art. 49, 51, 
53, 70

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Commission  DelegateD Regulation  (eu) 2018/625

invite the parties to file observations in accordance with Article 70(2) of 

(a) 
Regulation (EU) 2017/1001;

(b)  decide on requests for the extension of time limits and, as the case may 
be, set time limits within the meaning of Article 24(1), Article 25(5) and Article 
26 of this Regulation, and on suspensions pursuant to Article 71;

(c)  prepare  communications  in  accordance  with  Article  28  and  the  oral 
hearing;

(d)  sign the minutes of oral proceedings and of the taking of evidence.

Article 42
Registry

1.  A Registry shall be set up at the Boards of Appeal. It shall be responsible 
for the receipt, dispatch, safekeeping and notification of all documents relating 
to the proceedings before the Boards of Appeal, and for the compilation of the 
relevant files.

2. 
The Registry shall be headed by a Registrar. The Registrar shall fulfil the 
tasks  referred  to  in  this  Article  under  the  authority  of  the  President  of  the 
Boards of Appeal, without prejudice to the provisions in paragraph 3.

3. 
The Registrar shall ensure that all formal requirements and time limits, 
laid down in Regulation (EU) 2017/1001, in this Regulation or in decisions of the 
Presidium of the Boards of Appeal adopted in accordance with Article 166(4)(c) 
and (d) of Regulation (EU) 2017/1001 are respected. To this effect, the Regis-
trar shall have the following duties:

(a)  sign the decisions taken by the Boards of Appeal in respect of appeals;

take  and  sign  the  minutes  of  oral  proceedings  and  of  the  taking  of 

(b) 
evidence;

(c)  provide, either of its own motion or upon request from the Board of Appeal, 
reasoned opinions to the Board of Appeal on procedural and formal require-
ments including on irregularities pursuant to Article 23(2) of this Regulation;

(d)  submit the appeal, in accordance with Article 34(1) of this Regulation, to 
the instance of the Office which adopted the contested decision;

(e)  order, on behalf of the Board of Appeal, in the cases referred to in Article 
33(a) and (b) of this Regulation, the reimbursement of the appeal fee.

The EC Implementing and Delegated Regulations 219

The  Registrar  shall,  upon  delegation  of  the  President  of  the  Boards  of 

4. 
Appeal, have the following duties:

(a)  allocate cases in accordance with Article 35(1) and (4);

(b) 
implement,  pursuant  to  Article  166(4)(b)  of  Regulation  (EU)  2017/1001, 
decisions of the Presidium of the Boards of Appeal relating to the conduct of 
proceedings before the Boards of Appeal.

5. 
The  Registrar  may,  upon  delegation  of  the  Presidium  of  the  Boards  of 
Appeal made upon proposal of the President of the Boards of Appeal, perform 
other tasks relating to the conduct of appeal proceedings before the Boards of 
Appeal and the organisation of their work.

The Registrar may delegate the tasks referred to in this Article to a mem-

6. 
ber of the Registry.

EUTMR 
Art. 165 
EUTMDR 
Art. 32

7.  Where the Registrar is prevented from acting within the meaning of Article 
43(4), or where the post of Registrar is vacant, the President of the Boards of 
Appeal shall appoint a member of the Registry who shall perform the tasks of 
the Registrar in the Registrar’s absence.

8. 

The members of the Registry shall be managed by the Registrar.

Article 43
Order of seniority and replacement of members and chairpersons

1. 
The  seniority  of  chairpersons  and  members  shall  be  calculated  accord-
ing to the date on which they took up their duties as specified in the instru-
ment  of  appointment  or,  failing  that,  as  fixed  by  the  Management  Board  of 
the Office. Where there is equal seniority on that basis, the order of seniority 
shall be determined by age. Chairpersons and members whose term of office 
is renewed shall retain their former seniority.

EUTMR 
Art. 166 
EUTMDR 
Art. 44, 46

2.  Where  the  chairperson  of  a  Board  of  Appeal  is  prevented  from  acting, 
that chairperson shall be replaced, on the basis of seniority as determined in 
accordance  with  paragraph  1,  by  the  most  senior  member  of  that  Board  of 
Appeal, or, where no member of that Board of Appeal is available, by the most 
senior of the other members of the Boards of Appeal.

3.  Where  a  member  of  a  Board  of  Appeal  is  prevented  from  acting,  that 
member shall be replaced, on the basis of seniority as determined in accord-
ance with paragraph 1, by the most senior member of that Board of Appeal, or, 

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where no member of that Board of Appeal is available, by the most senior of 
the other members of the Boards of Appeal.

4. 
For the purposes of paragraphs 2 and 3, chairpersons and members of 
the Boards of Appeal shall be considered to be prevented from acting in case 
of leave, sickness, inescapable commitments and exclusion pursuant to Article 
169 of Regulation (EU) 2017/1001 and Article 35(4) of this Regulation. A chair-
person shall also be considered to be prevented from acting where that chair-
person acts ad interim as President of the Boards of Appeal pursuant to Article 
47(2) of this Regulation. Where the post of chairperson or member is vacant, 
their respective functions shall be exercised ad interim pursuant to the provi-
sions in paragraphs 2 and 3 of this Article concerning replacement.

5.  Any members considering themselves prevented from acting shall without 
delay inform the chairperson of the Board of Appeal concerned. Any chairper-
sons considering themselves prevented from acting shall without delay inform 
simultaneously  that  chairperson’s  alternate  determined  in  accordance  with 
paragraph 2 and the President of the Boards of Appeal.

Article 44
Exclusion and objection

EUTMR 
Art. 166 
EUTMDR 
Art. 35, 43

1.  Before a decision is taken by a Board of Appeal pursuant to Article 169(4) 
of Regulation (EU) 2017/1001, the chairperson or member concerned shall be 
invited to present comments as to whether there is a reason for exclusion or 
objection.

2.  Where the Board of Appeal obtains knowledge, from a source other than 
the member concerned or a party to the proceedings, of a possible reason for 
exclusion or objection under Article 169(3) of Regulation (EU) 2017/1001, the 
procedure laid down in Article 169(4) of Regulation (EU) 2017/1001 shall be 
applied.

3. 
The proceedings concerned shall be suspended until a decision is taken on 
the action to be taken pursuant to Article 169(4) of Regulation (EU) 2017/1001.

Article 45
Grand Board

EUTMR 
Art. 116 
EUTMDR 
Art. 35, 37

1. 
The  list  comprising  the  names  of  all  members  of  the  Boards  of  Appeal 
other than the President of the Boards of Appeal and the chairpersons of the 
Boards of Appeal for the purposes of drawing in rotation the members of the 
Grand Board referred to in Article 167(2) of Regulation (EU) 2017/1001 shall be 
drawn up in the order of seniority determined in accordance with Article 43(1) 

The EC Implementing and Delegated Regulations 221

of this Regulation. Where an appeal has been referred to the Grand Board pur-
suant to Article 165(3)(b) of Regulation (EU) 2017/1001, the Grand Board shall 
comprise the rapporteur designated prior to the referral.

2.  Article 40 shall apply to the President of the Boards of Appeal acting in 
the capacity of chairperson of the Grand Board. Article 41 shall apply to the 
rapporteur to the Grand Board.

3.  Where the President of the Boards of Appeal is prevented from acting as 
chairperson of the Grand Board, the President of the Boards of Appeal shall be 
replaced in that function and, as the case may be, as rapporteur to the Grand 
Board, on the basis of seniority as determined in accordance with Article 43(1), 
by the most senior chairperson of the Boards of Appeal. Where a member of 
the Grand Board is prevented from acting, that member shall be replaced by 
another member of the Boards of Appeal to be designated pursuant to Article 
167(2) of Regulation (EU) 2017/1001 and paragraph 1 of this Article. Article 
43(4) and (5) of this Regulation shall apply mutatis mutandis.

4. 
The Grand Board shall not deliberate or vote on cases, and oral proceed-
ings shall not take place before the Grand Board unless seven of its members 
are present, including its chairperson and the rapporteur.

5.  Article 39(1) to (5) shall apply to the deliberations and voting of the Grand 
Board. In the event of a tie, the vote of the chairperson shall be decisive.

6.  Article 32 shall apply to decisions of the Grand Board and mutatis mutan-
dis to its reasoned opinions within the meaning of Article 157(4)(l) of Regula-
tion (EU) 2017/1001.

Article 46
Presidium of the Boards of Appeal

1. 

The Presidium of the Boards of Appeal shall have the following duties:

(a)  decide on the constitution of Boards of Appeal;

(b)  determine the objective criteria for the allocation of appeal cases to the 
Boards of Appeal and rule on any conflict as regards the application thereof;

(c)  upon  proposal  of  the  President  of  the  Boards  of  Appeal,  establish  the 
Boards  of  Appeal’s  expenditure  requirements  with  a  view  to  drawing  up  the 
Office’s expenditure estimates;

EUTMR 
Art. 116, 
167 
EUTMDR 
Art. 35, 42

(d) 

lay down its internal rules;

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Commission  DelegateD Regulation  (eu) 2018/625

lay down rules for the processing of excluding and objecting to members 

(e) 
pursuant to Article 169 of Regulation (EU) 2017/1001;

(f) 

lay down the working instructions for the Registry;

(g) 
take any other measure for the purpose of exercising its functions of lay-
ing down the rules and of organising the work of the Boards of Appeal pursuant 
to Article 165(3)(a) and Article 166(4)(a) of Regulation (EU) 2017/1001.

2. 
The Presidium may validly deliberate only if at least two thirds of its mem-
bers, including the chairperson of the Presidium and half of the chairpersons 
of the Boards of Appeal, rounded up if necessary, are present. Decisions of the 
Presidium shall be taken by a majority vote. In the event of a tie, the vote of the 
chairperson shall be decisive.

The decisions adopted by the Presidium pursuant to Article 43(1), to Arti-
3. 
cle 45(1), and to paragraph 1(a) and (b) of this Article shall be published in the 
Official Journal of the Office.

Article 47
President of the Boards of Appeal

EUTMR 
Art. 165, 
167 
EUTMDR 
Art. 35,  42, 
45, 46

1.  Where  the  President  of  the  Boards  of  Appeal  is  prevented  from  acting 
within the meaning of Article 43(4), the managerial and organisational func-
tions conferred upon the President of the Boards of Appeal by Article 166(4) 
of Regulation (EU) 2017/1001 shall be exercised, on the basis of seniority as 
determined  in  accordance  with  Article  43(1)  of  this  Regulation,  by  the  most 
senior chairperson of the Boards of Appeal.

2.  Where the post of the President of the  Boards of  Appeal is vacant,  the 
functions of that president shall be exercised ad interim, on the basis of senior-
ity as determined in accordance with Article 43(1), by the most senior chairper-
son of the Boards of Appeal.

Article 48
Applicability to appeal proceedings of provisions relating to other 
proceedings

Unless otherwise provided in this title, the provisions relating to proceedings 
before the instance of the Office which adopted the decision subject to appeal 
shall be applicable to appeal proceedings mutatis mutandis.

The EC Implementing and Delegated Regulations 223

TITLE VI 
ORAL PROCEEDINGS AND TAKING OF EVIDENCE

Article 49
Summons to oral proceedings

1. 
The parties shall be summoned to oral proceedings provided for in Article 
96 of Regulation (EU) 2017/1001 and their attention shall be drawn to para-
graph 3 of this Article.

2.  When  issuing  the  summons,  the  Office  shall  request,  where  necessary, 
that  the  parties  provide  all  relevant  information  and  documents  before  the 
hearing. The Office may invite the parties to concentrate on one or more speci-
fied  issues  during  the  oral  proceedings.  It  may  also  offer  to  the  parties  the 
possibility  to  take  part  in  the  oral  proceedings  by  videoconference  or  other 
technical means.

3. 
If a party who has been duly summoned to oral proceedings before the 
Office does not appear as summoned, the proceedings may continue without 
that party.

The Office shall ensure that the case is ready for decision at the conclu-

4. 
sion of the oral proceedings, unless there are special reasons to the contrary.

Article 50
Languages of oral proceedings

1.  Oral proceedings shall be conducted in the language of the proceedings 
unless the parties agree to use a different official language of the Union.

EUTMR 
Art. 146

2. 
The Office may communicate in oral proceedings in another official lan-
guage of the Union and it may, upon request, authorise a party to do so pro-
vided that simultaneous interpretation into the language of proceedings can 
be made available. The costs of providing simultaneous interpretation shall be 
borne by the party making the request or by the Office as the case may be.

Article 51
Oral evidence of parties, witnesses or experts and inspection

1.  Where the Office considers it necessary to hear the oral evidence of par-
ties, witnesses or experts or to carry out an inspection, it shall take an interim 
decision to that end, stating the means by which it intends to obtain the evi-
dence, the relevant facts to be proved and the date, time and place of hearing 

EUTMR 
Art. 97 
EUTMDR 
Art. 52

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or  inspection.  Where  the  hearing  of  oral  evidence  of  witnesses  or  experts  is 
requested by a party, the Office shall determine in its decision the period within 
which that party must make known to the Office the names and addresses of 
the witnesses or experts.

The  summons  of  parties,  witnesses  or  experts  to  give  evidence  shall 

2. 
contain:

(a)  an  extract  from  the  decision  referred  to  in  paragraph  1,  indicating  the 
date,  time  and  place  of  the  hearing  ordered  and  stating  the  facts  regarding 
which the parties, witnesses and experts are to be heard;

the names of the parties to the proceedings and particulars of the rights 

(b) 
which the witnesses or experts may invoke under Article 54(2) to (5).

The summons shall also offer to the parties, witnesses or experts being sum-
moned the possibility to take part in the oral proceedings by videoconference 
or other technical means.

3.  Article 50(2) shall apply mutatis mutandis.

Article 52
Commissioning of and opinions by experts

EUTMR 
Art. 97 
EUTMDR 
Art. 51 
EUTMIR 
Art. 25 

The Office shall decide in what form an opinion is to be submitted by an 

1. 
expert.

2. 

The terms of reference of the expert shall include:

(a)  a precise description of the expert’s task;

(b) 

the time limit laid down for the submission of the expert opinion;

(c) 

the names of the parties to the proceedings;

(d)  particulars of the rights which the expert may invoke pursuant to Article 
54(2), (3) and (4).

3.  Where  an  expert  is  appointed,  the  expert  opinion  shall  be  submitted  in 
the  language  of  the  proceedings  or  accompanied  by  a  translation  into  that 
language. A copy of any written opinion, and of the translation if needed, shall 
be sent to the parties.

The EC Implementing and Delegated Regulations 225

4. 
The  parties  may  object  to  the  appointment  of  an  expert  on  grounds  of 
incompetence  or  on  the  same  grounds  as  those  on  which  objection  may  be 
made  against  an  examiner  or  against  a  member  of  a  Division  or  Board  of 
Appeal pursuant to Article 169(1) and (3) of Regulation (EU) 2017/1001. Any 
objection to the appointment of an expert shall be submitted in the language 
of the proceedings, or  accompanied by  a  translation into  that  language. The 
department of the Office concerned shall rule on the objection.

Article 53
Minutes of oral proceedings

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

the number of the case to which the oral proceedings relate and the date 

(a) 
of the oral proceedings;

the names of the officials of the Office, the parties, their representatives, 

(b) 
and of the witnesses and experts who are present;

EUTMR 
Art. 96, 97 
EUTMDR 
Art. 49, 51

(c) 

the submissions and requests made by the parties;

(d) 

the means of giving or obtaining evidence;

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

The minutes shall become part of the file of the relevant EU trade mark 

2. 
application or registration. They shall be notified to the parties.

3.  Where  oral  proceedings  or  the  taking  of  evidence  before  the  Office  are 
recorded, the recording shall replace the minutes and paragraph 2 shall apply 
mutatis mutandis.

Article 54
Costs of taking of evidence in oral proceedings

1. 
The  taking  of  evidence  by  the  Office  may  be  made  conditional  upon 
deposit with it, by the party who has requested the evidence to be taken, of 
a sum which shall be fixed by reference to an estimate of the costs.

EUTMR 
Art. 96, 97 
EUTMDR 
Art. 50-52

2.  Witnesses  and  experts  who  are  summoned  by  and  appear  before  the 
Office shall be entitled to reimbursement of reasonable expenses for travel and 
subsistence where such expenses are incurred. An advance for such expenses 
may be granted to them by the Office.

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3.  Witnesses entitled to reimbursement pursuant to paragraph 2 shall also 
be entitled to appropriate compensation for loss of earnings, and experts to 
fees  for  their  work.  That  compensation  shall  be  paid  to  the  witnesses  and 
experts  after  they  have  fulfilled  their  duties  or  tasks,  where  such  witnesses 
and experts have been summoned by the Office of its own initiative.

The  amounts  and  advances  for  expenses  to  be  paid  pursuant  to  para-
4. 
graphs 1, 2 and 3 shall be determined by the Executive Director and shall be 
published in the Official Journal of the Office. The amounts shall be calculated 
on the same basis as laid down in the Staff Regulations of the Officials of the 
Union and the Conditions of Employment of Other Servants of the Union, laid 
down in Council Regulation (EEC, Euratom, ECSC) No 259/68 (11) and Annex VII 
thereto.

Liability for the amounts due or paid pursuant to paragraphs 1 to 4 shall 

5. 
lie with:

the Office where it, at its own initiative, has summoned the witnesses or 

(a) 
experts;

(b) 
the  party  concerned  where  that  party  has  requested  the  giving  of  oral 
evidence by witnesses or experts, subject to the decision on apportionment and 
fixing of costs pursuant to Articles 109 and 110 of Regulation (EU) 2017/1001 
and  Article  18  of  Implementing  Regulation  (EU)  2018/626.  Such  party  shall 
reimburse the Office for any advances duly paid.

Article 55
Examination of written evidence

EUTMR 
Art. 97 
EUTMDR 
Art. 64

1. 
The Office shall examine any evidence given or obtained in any proceed-
ings before it to the extent necessary to take a decision in the proceedings in 
question.

2. 
The documents or other items of evidence shall be contained in annexes 
to a submission which shall be numbered consecutively. The submission shall 
include an index indicating, for each document or item of evidence annexed:

(a) 

the number of the annex;

(b)  a short description of the document or item and, if applicable, the number 
of pages;

the  page  number  of  the  submission  where  the  document  or  item  is 

(c) 
mentioned.

The EC Implementing and Delegated Regulations 227

The submitting party may also indicate, in the index of annexes, which specific 
parts of a document it relies upon in support of its arguments.

3.  Where  the  submission  or  the  annexes  do  not  comply  with  the  require-
ments set out in paragraph 2, the Office may invite the submitting party to 
remedy any deficiency, within a period specified by the Office.

4.  Where the deficiency is not remedied within the period specified by the 
Office, and where it is still not possible for the Office to clearly establish to 
which ground or argument a document or item of evidence refers, that docu-
ment or item shall not be taken into account.

TITLE VII 
NOTIFICATIONS BY THE OFFICE

Article 56
General provisions on notifications

1. 
In proceedings before the Office, notifications to be made by the Office 
shall  be  in  accordance  with  Article  94(2)  of  Regulation  (EU)  2017/1001  and 
shall consist in the transmission of the document to be notified to the parties 
concerned. Transmission may be effected by providing electronic access to that 
document.

2.  Notifications shall be made by one of the following means:

EUTMR 
Art. 98

(a)  electronic means pursuant to Article 57;

(b)  post or courier pursuant to Article 58;

(c)  public notification pursuant to Article 59.

3.  Where  the  addressee  has  indicated  contact  details  for  communicating 
with the addressee through electronic means, the Office shall have the choice 
between those means and notification by post or courier.

(11) Regulation (EEC, Euratom, ECSC) No 259/68 of the Council of 29 February 1968 laying down the 
Staff Regulations of Officials and the Conditions of Employment of Other Servants of the European 
Communities and instituting special measures temporarily applicable to officials of the Commission 
(Conditions of Employment of Other Servants) (OJ L 56, 4.3.1968, p. 1).

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Article 57
Notification by electronic means

EUTMR 
Art. 98

1.  Notification by electronic means covers transmissions by wire, by radio, by 
optical means or by other electromagnetic means, including the internet.

The Executive Director shall determine the details regarding the specific 
2. 
electronic  means  to  be  used,  the  manner  in  which  electronic  means  will  be 
used, and the time limit for notification by electronic means.

Article 58
Notification by post or courier

EUTMR 
Art. 98

1.  Notwithstanding Article 56(3), decisions subject to a time limit for appeal, 
summons and other documents as determined by the Executive Director shall 
be notified by courier service or registered post, in both cases with advice of 
delivery. All other notifications shall be either by courier service or registered 
post, whether or not with advice of delivery, or by ordinary post.

2.  Notwithstanding Article 56(3), notifications in respect of addressees hav-
ing  neither  their  domicile  nor  their  principal  place  of  business  or  a  real  and 
effective  industrial  or  commercial  establishment  in  the  European  Economic 
Area (‘EEA’) and who have not appointed a representative as required by Article 
119(2) of Regulation (EU) 2017/1001 shall be effected by posting the docu-
ment requiring notification by ordinary post.

3.  Where  notification  is  effected  by  courier  service  or  registered  post, 
whether or not with advice of delivery, it shall be deemed to be delivered to the 
addressee on the tenth day following that of its posting, unless the letter has 
failed to reach the addressee or has reached the addressee at a later date. In 
the event of any dispute, it shall be for the Office to establish that the letter 
has reached its destination or to establish the date on which it was delivered to 
the addressee, as the case may be.

4.  Notification by courier service or registered post shall be deemed to have 
been effected even if the addressee refuses to accept the letter.

5.  Notification by ordinary post shall be deemed to have been effected on 
the 10th day following that of its posting.

The EC Implementing and Delegated Regulations 229

Article 59
Notification by public notice

Where the address of the addressee cannot be established or where after at 
least one attempt at notification in accordance with Article 56(2)(a) and (b) has 
proved impossible, notification shall be effected by public notice.

EUTMR 
Art. 98

Article 60
Notification to representatives

1.  Where a representative has been appointed or where the applicant first 
named in a common application is considered to be the common representative 
pursuant to Article 73(1), notifications shall be addressed to that appointed or 
common representative.

EUTMR 
Art. 119, 
120 
EUTMDR 
Art. 74

2.  Where a single party has appointed several representatives, notification 
shall be effected in accordance with Article 2(1)(e) of Implementing Regulation 
(EU) 2018/626. Where several parties have appointed a common representa-
tive, notification of a single document to the common representative shall be 
sufficient.

3.  A  notification  or  other  communication  addressed  by  the  Office  to  the 
duly  authorised  representative  shall  have  the  same  effect  as  if  it  had  been 
addressed to the represented person.

Article 61
Irregularities in notification

Where a document has reached the addressee and where the Office is unable 
to prove that it has been duly notified or where provisions relating to its noti-
fication have not been observed, the document shall be deemed to have been 
notified on the date established as the date of receipt.

EUTMR 
Art. 98

Article 62
Notification of documents in the case of several parties

Documents  emanating  from  parties  shall  be  notified  to  the  other  parties  as 
a matter of course. Notification may be dispensed with where the document 
contains no new pleadings and the matter is ready for decision.

EUTMR 
Art. 98

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TITLE VIII 
WRITTEN COMMUNICATIONS AND FORMS

Article 63
Communications to the Office in writing or by other means

EUTMR 
Art. 100 
EUTMDR 
Art. 65

1.  Applications for the registration of an EU trade mark as well as any other 
application provided for in Regulation (EU) 2017/1001 and all other communi-
cations addressed to the Office shall be submitted as follows:

(a)  by transmitting a communication by electronic means, in which case the 
indication of the name of the sender shall be deemed to be equivalent to the 
signature;

(b)  by submitting a signed original of the document in question to the Office 
by post or courier.

2. 
In proceedings before the Office, the date on which a communication is 
received by the Office shall be considered to be its date of filing or submission.

3.  Where  a  communication  received  by  electronic  means  is  incomplete  or 
illegible or where the Office has reasonable doubts as to the accuracy of the 
transmission, the Office shall inform the sender accordingly and shall invite the 
sender, within a period to be specified by the Office, to retransmit the original 
or to submit it in accordance with paragraph (1)(b). Where that request is com-
plied with within the period specified, the date of receipt of the retransmission 
or of the original shall be deemed to be the date of the receipt of the original 
communication. However, where the deficiency concerns the granting of a filing 
date for an application to register a trade mark, the provisions on the filing date 
shall apply. Where the request is not complied with within the period specified, 
the communication shall be deemed not to have been received.

Article 64
Annexes to communications by post or courier

1.  Annexes to communications may be submitted on data carriers in accord-
ance with the technical specifications determined by the Executive Director.

2.  Where  a  communication  with  annexes  is  submitted  in  accordance  with 
Article 63(1)(b) by a party to proceedings involving more than one party, the 
party shall submit as many copies of the annexes as there are parties to the 
proceedings.  Annexes  shall  be  indexed  in  accordance  with  the  requirements 
laid down in Article 55(2).

The EC Implementing and Delegated Regulations 231

Article 65
Forms

The Office shall make forms available to the public free of charge, which 

1. 
may be completed online, for the purposes of:

EUTMR 
Art. 100, 
146

filing an application for an EU trade mark, including, where appropriate, 

(a) 
requests for the search reports;

(b)  entering an opposition;

(c)  applying for revocation of rights;

(d)  applying for a declaration of invalidity or the assignment of an EU trade 
mark;

(e)  applying for the registration of a transfer and the transfer form or docu-
ment referred to in Article 13(3)(d) of Implementing Regulation (EU) 2018/626;

(f)  applying for the registration of a licence;

(g)  applying for the renewal of an EU trade mark;

(h)  making an appeal;

authorising a representative, in the form of an individual authorisation or 

(i) 
a general authorisation;

submitting an international application or a subsequent designation pur-
(j) 
suant to the Protocol relating to the Madrid Agreement concerning the inter-
national registration of marks, adopted at Madrid on 27 June 1989 (12) to the 
Office.

2. 

Parties to the proceedings before the Office may also use:

(a) 
forms established under the Trademark Law Treaty or pursuant to recom-
mendations of the Assembly of the Paris Union for the Protection of Industrial 
Property;

(b)  with the exception of the form referred to in point (i) of paragraph 1, forms 
with the same content and format as those referred to in paragraph 1.

(12) OJ L 296, 14.11.2003, p. 22.

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Commission  DelegateD Regulation  (eu) 2018/625

EUTMR 
Art. 119, 
120 
EUTMDR 
Art. 74

The Office shall make the forms referred to in paragraph 1 available in all 

3. 
the official languages of the Union.

Article 66
Communications by representatives

Any communication addressed to the Office by the duly authorised representa-
tive shall have the same effect as if it originated from the represented person.

TITLE IX 
TIME LIMITS

Article 67
Calculation and duration of time limits

EUTMR 
Art. 101 
EUTMDR 
Art. 72

1. 
The  calculation  of  a  time  limit  shall  start  on  the  day  following  the  day 
on which the relevant event occurred, either a procedural step or the expiry of 
another time limit. Where that procedural step is a notification, the event shall 
be the receipt of the document notified, unless otherwise provided for.

2.  Where  a  time  limit  is  expressed  as  one  year  or  a  certain  number  of 
years, it shall expire on the relevant subsequent year in the month having the 
same name and on the day having the same number as the month and the 
day on which the relevant event occurred. Where the relevant month has no 
day with the same number, the time limit shall expire on the last day of that 
month.

3.  Where  a  time  limit  is  expressed  as  one  month  or  a  certain  number  of 
months, it shall expire on the relevant subsequent month on the day which has 
the same number as the day on which the relevant event occurred. Where the 
relevant subsequent month has no day with the same number, the time limit 
shall expire on the last day of that month.

4.  Where a time limit is expressed as one week or a certain number of weeks, 
it shall expire on the relevant subsequent week on the day having the same 
name as the day on which the said event occurred.

Article 68
Extension of time limits

EUTMR 
Art. 101

Subject  to  specific  or  maximum  time  limits  laid  down  in  Regulation  (EU) 
2017/1001,  Implementing  Regulation  (EU)  2018/626  or  this  Regulation,  the 

The EC Implementing and Delegated Regulations 233

Office  may  grant  an  extension  of  a  time  limit  upon  reasoned  request.  Such 
request  shall  be  submitted  by  the  party  concerned  before  the  time  limit  in 
question expires. Where there are two or more parties, the Office may subject 
the extension of a time limit to the agreement of the other parties.

Article 69
Expiry of time limits in special cases

1.  Where a time limit expires on a day on which the Office is not open for 
receipt of documents or on which, for reasons other than those referred to in 
paragraph 2, ordinary post is not delivered in the locality in which the Office 
is  located,  the  time  limit  shall  be  extended  until  the  first  day  thereafter  on 
which the Office is open for receipt of documents and on which ordinary mail is 
delivered.

EUTMR 
Art. 101

2.  Where a time limit expires on a day on which there is a general interrup-
tion in the delivery of mail in the Member State where the Office is located, or, 
if and to the extent that the Executive Director has allowed communications 
to be sent by electronic means pursuant to Article 100(1) of Regulation (EU) 
2017/1001, on which there is an actual interruption of the Office’s connection 
to those electronic means of communication, the time limit shall be extended 
until the first day thereafter on which the Office is open for receipt of docu-
ments  and  on  which  ordinary  mail  is  delivered  or  the  Office’s  connection  to 
those electronic means of communication is restored.

TITLE X 
REVOCATION OF A DECISION

Article 70
Revocation of a decision or entry in the Register

1.  Where  the  Office  finds  of  its  own  motion  or  pursuant  to  corresponding 
information provided by the parties to the proceedings that a decision or entry 
in the Register is subject to revocation pursuant to Article 103 of Regulation (EU) 
2017/1001, it shall inform the affected party about the intended revocation.

EUTMR 
Art. 111

The affected party shall submit observations on the intended revocation 

2. 
within a time limit specified by the Office.

3.  Where the affected party agrees to the intended revocation or does not 
submit any observations within the time limit, the Office shall revoke the deci-

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Commission  DelegateD Regulation  (eu) 2018/625

sion or entry. If the affected party does not agree to the intended revocation, 
the Office shall take a decision on the intended revocation.

4.  Where  the  intended  revocation  is  likely  to  affect  more  than  one  party, 
paragraphs 1, 2 and 3 shall apply mutatis mutandis. In those cases the obser-
vations submitted by one of the parties pursuant to paragraph 3 shall always 
be  communicated  to  the  other  party  or  parties  with  an  invitation  to  submit 
observations.

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

6.  Competence for revocation pursuant to paragraphs 1 to 4 shall lie with the 
department or unit which took the decision.

TITLE XI 
SUSPENSION OF PROCEEDINGS

Article 71
Suspension of proceedings

EUTMR 
Art. 101

1.  As regards opposition, revocation and declaration of invalidity and appeal 
proceedings,  the  competent  department  or  Board  of  Appeal  may  suspend 
proceedings:

(a)  of  its  own  motion  where  a  suspension  is  appropriate  under  the  circum-
stances of the case;

(b)  at the reasoned request of one of the parties in inter partes proceedings 
where a suspension is appropriate under the circumstances of the case, taking 
into account the interests of the parties and the stage of the proceedings.

2.  At  the  request  of  both  parties  in  inter  partes  proceedings,  the  compe-
tent department or Board of Appeal shall suspend the proceedings for a period 
which  shall  not  exceed  six  months.  That  suspension  may  be  extended  upon 
a request of both parties up to a total maximum of two years.

3.  Any  time  limits  related  to  the  proceedings  in  question,  other  than  the 
time limits for the payment of the applicable fee, shall be interrupted as from 
the date of suspension. Without prejudice to Article 170(5) of Regulation (EU) 

The EC Implementing and Delegated Regulations 235

2017/1001, the time limits shall be recalculated to begin in full as from the day 
on which the proceedings are resumed.

4.  Where appropriate under the circumstances of the case, the parties may 
be invited to submit their observations as regards the suspension or resump-
tion of the proceedings.

TITLE XII 
INTERRUPTION OF PROCEEDINGS

Article 72
Resumption of proceedings

1.  Where proceedings before the Office have been interrupted pursuant to 
Article 106(1) of Regulation (EU) 2017/1001, the Office shall be informed of 
the identity of the person authorised to continue the proceedings before it pur-
suant to Article 106(2) of Regulation (EU) 2017/1001. The Office shall commu-
nicate to that person and to any interested third parties that the proceedings 
shall be resumed as from a date to be fixed by the Office.

EUTMR 
Art. 53, 
101 
EUTMDR 
Art. 60, 67, 
74

2.  Where, three months after the beginning of the interruption of the pro-
ceedings pursuant to Article 106(1)(c) of Regulation (EU) 2017/1001, the Office 
has  not  been  informed  of  the  appointment  of  a  new  representative,  it  shall 
inform the applicant for or proprietor of the EU trade mark that:

(a)  where  Article  119(2)  of  Regulation  (EU)  2017/1001  shall  apply,  the  EU 
trade mark application shall be deemed to be withdrawn if the information is 
not submitted within two months after the communication is notified;

(b)  where  Article  119(2)  of  Regulation  (EU)  2017/1001  does  not  apply,  the 
proceedings will be resumed with the applicant for or proprietor of the EU trade 
mark as from the date on which this communication is notified.

3. 
The time limits in force as regards the applicant for or proprietor of the EU 
trade mark at the date of interruption of the proceedings, other than the time 
limit for paying the renewal fees, shall begin again as from the day on which 
the proceedings are resumed.

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Commission  DelegateD Regulation  (eu) 2018/625

TITLE XIII 
REPRESENTATION

Article 73
Appointment of a common representative

EUTMR 
Art. 20, 21, 
119, 120 
EUTMDR 
Art. 74 
EUTMIR 
Art. 2 

1.  Where there is more than one applicant and the application for an EU trade 
mark does not name a common rep  resentative, the first applicant named in 
the application having its domicile or principal place of business or a real and 
effective industrial or commercial establishment in the EEA, or its representa-
tive if appointed, shall be considered to be the common representative. Where 
all of the applicants are obliged to appoint a professional representative, the 
professional representative who is named first in the application shall be con-
sidered to be the common representative. This shall apply mutatis mutandis to 
third parties acting jointly in filing notice of opposition or applying for revoca-
tion  or  for  a  declaration  of  invalidity  and  to  joint  proprietors  of  an  EU  trade 
mark.

2.  Where, during the course of proceedings, transfer is made to more than 
one person and those persons have not appointed a common representative, 
paragraph 1 shall apply. Where such an appointment is not possible, the Office 
shall  require  those  persons  to  appoint  a  common  representative  within  two 
months. If that request is not complied with, the Office shall appoint the com-
mon representative.

Article 74
Authorisations

EUTMDR 
Art. 60, 66

1. 
Employees  who  represent  natural  or  legal  persons  within  the  meaning 
of Article 119(3) of Regulation (EU) 2017/1001, as well as legal practitioners 
and professional representatives entered on the list maintained by the Office 
pursuant  to  Article  120(2)  of  Regulation  (EU)  2017/1001,  shall  file  a  signed 
authorisation  with  the  Office  for  insertion  in  the  files  pursuant  to  Article 
119(3) and Article 120(1) of Regulation (EU) 2017/1001 only where the Office 
expressly requires it or where there are several parties to the proceedings in 
which the representative acts before the Office and the other party expressly 
asks for it.

2.  Where it is required, pursuant to Article 119(3) or Article 120(1) of Regula-
tion (EU) 2017/1001, that a signed authorisation be filed, such an authorisa-
tion  may  be  filed  in  any  official  language  of  the  Union.  It  may  cover  one  or 
more applications or registered trade marks or may be in the form of a general 

The EC Implementing and Delegated Regulations 237

authorisation authorising the representative to act in respect of all proceedings 
before the Office to which the person giving the authorisation is a party.

3. 
The Office shall specify a time limit within which such an authorisation 
shall be filed. Where the authorisation is not filed in due time, proceedings shall 
be continued with the represented person. Any procedural steps taken by the 
representative other than the filing of the application shall be deemed not to 
have been taken if the represented person does not approve them within a time 
limit specified by the Office.

Paragraphs  1  and  2  shall  apply  mutatis  mutandis  to  a  document  with-

4. 
drawing an authorisation.

5.  Any representative who has ceased to be authorised shall continue to be 
regarded as the representative until the termination of that representative’s 
authorisation has been communicated to the Office.

6.  Subject  to  any  provisions  to  the  contrary  contained  therein,  an  authori-
sation shall not automatically cease to be valid vis-à-vis the Office upon the 
death of the person who gave it.

7.  Where  the  appointment  of  a  representative  is  communicated  to  the 
Office,  the  name  and  the  business  address  of  the  representative  shall  be 
indicated  in  accordance  with  Article  2(1)(e)  of  Implementing  Regulation  (EU) 
2018/626. Where a representative who has already been appointed appears 
before the Office, that representative shall indicate the name and the identi-
fication number attributed to the representative by the Office. Where several 
representatives are appointed by the same party, they may, notwithstanding 
any provisions to the contrary in their authorisations, act either jointly or singly.

8. 
The  appointment  or  authorisation  of  an  association  of  representatives 
shall be deemed to be an appointment or authorisation of any representative 
who practises within that association.

Article 75
Amendment of the list of professional representatives

Pursuant  to  Article  120(5)  of  Regulation  (EU)  2017/1001,  the  entry  of 

1. 
a professional representative shall be deleted automatically:

EUTMR 
Art. 117

in  the  event  of  the  death  or  legal  incapacity  of  the  professional 

(a) 
representative;

238

Commission  DelegateD Regulation  (eu) 2018/625

(b)  where  the  professional  representative  is  no  longer  a  national  of  one  of 
the Member States of the EEA, unless the Executive Director has granted an 
exemption under Article 120(4)(b) of Regulation (EU) 2017/1001;

(c)  where the professional representative no longer has a place of business or 
employment in the EEA;

(d)  where  the  professional  representative  no  longer  possesses  the  entitle-
ment referred  to in the  first sentence  of  Article 120(2)(c) of  Regulation (EU) 
2017/1001.

2. 
The  entry  of  a  professional  representative  shall  be  suspended  of  the 
Office’s own motion where the representative’s entitlement to represent natu-
ral or legal persons before the Benelux Office for Intellectual Property or the 
central industrial property office of a Member State as referred to in the first 
sentence of Article 120(2)(c) of Regulation (EU) 2017/1001 has been suspended.

3.  Where the conditions for deletion no longer exist, a person whose entry 
has been deleted shall, upon request, accompanied by a certificate pursuant to 
Article 120(3) of Regulation (EU) 2017/1001, be reinstated in the list of profes-
sional representatives.

4. 
The  Benelux  Office  for  Intellectual  Property  and  the  central  industrial 
property offices of the Member States concerned shall, where they are aware 
of any relevant events referred to in paragraphs 1 and 2, promptly inform the 
Office thereof.

TITLE XIV 
PROCEDURES CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS

Article 76
Collective and certification marks

EUTMR 
Art. 116

1.  Without prejudice to Article 193 of Regulation (EU) 2017/1001, where an 
international registration designating the Union is dealt with as an EU collec-
tive mark or as an EU certification mark pursuant to Article 194(1) of Regula-
tion  (EU)  2017/1001,  a  notification  of  an  ex  officio  provisional  refusal  shall 
also be issued in accordance with Article 33 of Implementing Regulation (EU) 
2018/626 in the following cases:

The EC Implementing and Delegated Regulations 239

(a)  where one of the grounds for refusal provided for in Article 76(1) or (2) of 
Regulation (EU) 2017/1001, in conjunction with paragraph 3 of that Article, or in 
Article 85(1) or (2) of Regulation (EU) 2017/1001, in conjunction with paragraph 
3 of that Article exists;

(b)  where the regulations governing use of the mark have not been submitted 
in accordance with Article 194(2) of Regulation (EU) 2017/1001.

2.  Notice of amendments to the regulations governing the use of the mark 
pursuant to Articles 79 and 88 of Regulation (EU) 2017/1001 shall be published 
in the European Union Trade Marks Bulletin.

Article 77
Opposition proceedings

1.  Where an opposition is entered against an international registration des-
ignating the Union pursuant to Article 196 of Regulation (EU) 2017/1001, the 
notice of opposition shall contain:

the number of the international registration against which opposition is 

(a) 
entered;

(b)  an indication of the goods or services listed in the international registra-
tion against which opposition is entered;

(c) 

the name of the holder of the international registration;

(d) 

the requirements laid down in Article 2(2)(b) to (h) of this Regulation.

2.  Article 2(1), (3) and (4) and Articles 3 to 10 of this Regulation shall apply 
for the purposes of opposition proceedings relating to international registra-
tions designating the Union, subject to the following conditions:

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

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

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

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Commission  DelegateD Regulation  (eu) 2018/625

3.  Where  the  notice  of  opposition  is  filed  before  the  expiry  of  the  period 
of one month referred to in Article 196(2) of Regulation (EU) 2017/1001, the 
notice of opposition shall be deemed to have been filed on the first day follow-
ing the expiry of the period of one month.

4.  Where the holder of the international registration is obliged to be repre-
sented in proceedings before the Office pursuant to Article 119(2) of Regula-
tion (EU) 2017/1001, and where the holder of the international registration has 
not already appointed a representative within the meaning of Article 120(1) of 
Regulation (EU) 2017/1001, the communication of the opposition to the holder 
of the international registration pursuant to Article 6(1) of this Regulation shall 
contain  a  request  for  the  appointment  of  a  representative  within  the  mean-
ing of Article 120(1) of Regulation (EU) 2017/1001 within a time limit of two 
months of the date of notification of the communication.

Where the holder of the international registration fails to appoint a representa-
tive within that time limit, the Office shall take a decision refusing the protec-
tion of the international registration.

The opposition procedure shall be stayed where an ex officio provisional 
5. 
refusal  of  protection  is  issued  pursuant  to  Article  193  of  Regulation  (EU) 
2017/1001.  Where  the  ex  officio  provisional  refusal  has  led  to  a  decision  to 
refuse  protection  of  the  mark  which  has  become  final,  the  Office  shall  not 
proceed  to  a  decision  and  refund  the  opposition  fee  and  no  decision  on  the 
apportionment of costs shall be taken.

Article 78
Notification of provisional refusals based on an opposition

1.  Where  a  notice  of  opposition  against  an  international  registration  is 
entered at the Office pursuant to Article 196(2) of Regulation (EU) 2017/1001, 
or  where  an  opposition  is  deemed  to  have  been  entered  pursuant  to  Article 
77(3)  of  this  Regulation,  the  Office  shall  issue  a  notification  of  provisional 
refusal of protection based on an opposition to the International Bureau of the 
World Intellectual Property Organisation (‘the International Bureau’).

The notification of provisional refusal of protection based on an opposi-

2. 
tion shall contain:

(a) 

the number of the international registration;

the indication that the refusal is based on the fact that an opposition has 
(b) 
been filed, together with a reference to the provisions of Article 8 of Regulation 
(EU) 2017/1001 upon which the opposition relies;

The EC Implementing and Delegated Regulations 241

(c) 

the name and the address of the opposing party.

3.  Where  the  opposition  is  based  on  a  trade  mark  application  or  registra-
tion,  the  notification  referred  to  in  paragraph  2  shall  contain  the  following 
indications:

(a) 

the filing date, the registration date and the priority date, if any;

(b) 

the filing number and, the registration number, if different;

(c) 

the name and address of the owner;

(d)  a reproduction of the mark;

(e) 

the list of goods or services upon which the opposition is based.

4.  Where  the  provisional  refusal  relates  to  only  part  of  the  goods  or  ser-
vices, the notification referred to in paragraph 2 shall indicate those goods or 
services.

5. 

The Office shall inform the International Bureau of the following:

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

(b)  where a decision to refuse protection of the mark has become final fol-
lowing an appeal pursuant to Article 66 of Regulation (EU) 2017/1001 or an 
action pursuant to Article 72 of Regulation (EU) 2017/1001, the fact that pro-
tection of the mark is refused in the Union;

(c)  where the refusal referred to in point (b) concerns only part of the goods 
or services, the goods or services for which the mark is protected in the Union.

6.  Where more than one provisional refusal has been issued for one inter-
national registration pursuant to Article 193(2) of Regulation (EU) 2017/1001 
or paragraph 1 of this Article, the communication referred to in paragraph 5 of 
this Article shall relate to the total or partial refusal of protection of the mark 
pursuant to Articles 193 and 196 of Regulation (EU) 2017/1001.

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Commission  DelegateD Regulation  (eu) 2018/625

Article 79
Statement of grant of protection

1.  Where the Office has not issued an ex officio provisional notification of 
refusal pursuant to Article 193 of Regulation (EU) 2017/1001 and no opposition 
has been received by the Office within the opposition period referred to in Arti-
cle 196(2) of Regulation (EU) 2017/1001 and the Office has not issued an ex 
officio provisional refusal as a result of the third party observations submitted, 
the Office shall send a statement of grant of protection to the International 
Bureau indicating that the mark is protected in the Union.

2. 
For  the  purposes  of  Article  189(2)  of  Regulation  (EU)  2017/1001,  the 
statement of grant of protection referred to in paragraph 1 of this Article shall 
have the same effect as a statement by the Office that a notice of refusal has 
been withdrawn.

TITLE XV 
FINAL PROVISIONS

Article 80
Transitional measures

The provisions of Regulations (EC) No 2868/95 and (EC) No 216/96 shall con-
tinue to apply to ongoing proceedings where this Regulation does not apply in 
accordance with its Article 82, until such proceedings are concluded.

Article 81
Repeal

Commission Delegated Regulation (EU) 2017/1430 is repealed.

Article 82
Entry into force and application

This Regulation shall enter into force on the twentieth day following that 

1. 
of its publication in the Official Journal of the European Union.

It shall be applicable from the date of entry into force referred to in para-

2. 
graph 1, subject to the following exceptions:

(a)  Articles 2 to 6 shall not apply to notices of opposition entered before 1 
October 2017;

The EC Implementing and Delegated Regulations 243

(b)  Articles 7 and 8 shall not apply to opposition proceedings, the adversarial 
part of which has started before 1 October 2017;

(c)  Article 9 shall not apply to suspensions made before 1 October 2017;

(d)  Article 10 shall not apply to requests for proof of use made before 1 Octo-
ber 2017;

(e)  Title III shall not apply to requests for amendment entered before 1 Octo-
ber 2017;

(f)  Articles 12 to 15 shall not apply to applications for revocation or for a dec-
laration of invalidity or requests for assignment entered before 1 October 2017;

(g)  Articles 16 and 17 shall not apply to proceedings, the adversarial part of 
which has started before 1 October 2017;

(h)  Article 18 shall not apply to suspensions made before 1 October 2017;

(i)  Article 19 shall not apply to requests for proof of use made before 1 Octo-
ber 2017;

(j) 

Title V shall not apply to appeals entered before 1 October 2017;

(k)  Title VI shall not apply to oral proceedings initiated before 1 October 2017 
or to written evidence where the period for its presentation has started before 
that date;

(l) 

Title VII shall not apply to notifications made before 1 October 2017;

(m)  Title VIII shall not apply to communications received and to forms made 
available before 1 October 2017;

(n)  Title IX shall not apply to time limits set before 1 October 2017;

(o)  Title X shall not apply to revocations of decisions taken or entries in the 
Register made before 1 October 2017;

(p)  Title XI shall not apply to suspensions requested by the parties or imposed 
by the Office before 1 October 2017;

(q)  Title XII shall not apply to proceedings interrupted before 1 October 2017;

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Commission  DelegateD Regulation  (eu) 2018/625

(r)  Article 73 shall not apply to EU trade mark applications received before 1 
October 2017;

(s)  Article 74 shall not apply to representatives appointed before 1 October 
2017;

(t)  Article 75 shall not apply to entries on the list of professional representa-
tives made before 1 October 2017;

(u)  Title XIV shall not apply to designations of the EU trade mark made before 
1 October 2017.

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

Done at Brussels, 5 March 2018.

For the Commission 
The President 
Jean-Claude JUNCKER

 
 
 
The EC Implementing and Delegated Regulations 245

Commission Implementing Regulation (EU) 2018/626 

of 5 March 2018

laying down detailed rules for implementing certain 
provisions of Regulation (EU) 2017/1001  
of the European Parliament and  
of the Council on the European Union trade mark,  
and repealing Implementing Regulation (EU) 2017/1431

246

Commission implementing Regulation ( eu) 2018/626 

REGULATION (EU) 2018/626

TABLE OF CONTENTS (NOT PART OF THE OFFICIAL TEXT)

Subject matter 

TITLE I 
GENERAL PROVISIONS 
Article 1 
TITLE II 
APPLICATION PROCEDURE 
Article 2 
Article 3 
Article 4 
Article 5 
Article 6 

Article 7 
Article 8 
TITLE III 
REGISTRATION PROCEDURE 
Article 9 
Article 10 
Article 11 
Article 12 

Content of the application 
Representation of the trade mark 
Claiming priority 
Exhibition priority 
Claiming seniority of a national trade mark before registration 
of the EU trade mark 
Content of the publication of an application 
Division of the application 

Certificate of registration 
Content of the request for alteration of a registration 
Declaration of the division of a registration 
Content of a request for the change of the name or address of 
the proprietor of an EU trade mark or of the applicant for an EU 
trade mark 

Surrender 

Application for registration of a transfer 
Processing of applications for partial transfer 

TITLE IV 
TRANSFER 
Article 13 
Article 14 
TITLE V 
SURRENDER 
Article 15 
TITLE VI 
EU COLLECTIVE MARKS AND CERTIFICATION MARKS 
Article 16 
Article 17 
TITLE VII 
COSTS 
Article 18 
TITLE VIII 
PERIODICAL PUBLICATIONS 
Article 19 

Maximum rates for costs 

Periodical publications 

266
Content of regulations governing the use of EU collective marks 
266
Content of regulations governing the use of EU certification marks  267

252
252

254
254
256
259
259

260
260
261

262
262
262
263

263

264
264
265

265
265

267
267

269
269

The EC Implementing and Delegated Regulations 247

Exchange of information between the Office and the authorities 
of the Member States 
Opening of files for inspection 

TITLE IX 
ADMINISTRATIVE COOPERATION 
Article 20 

Article 21 
TITLE X 
CONVERSION 
Article 22 
Article 23 
TITLE XI 
LANGUAGES 
Article 24 
Article 25 
Article 26 
TITLE XII 
ORGANISATION OF THE OFFICE 
Article 27 

Content of a request for conversion 
Content of the publication of a request for conversion 

Filing of supporting documents in written proceedings 
Standard of translations 
Legal authenticity of translations 

Decisions of an Opposition Division or a Cancellation Division 
taken by a single member 

TITLE XIII 
PROCEDURES CONCERNING THE INTERNATIONAL REGISTRATION OF 
MARKS 
Article 28 
Article 29 

Form to be used for the filing of an international application 
Facts and decisions on invalidity to be notified to the 
International Bureau 
Request for territorial extension subsequent to international 
registration 
Form to be used for a request for territorial extension 
Seniority claims before the Office 
Notification of ex officio provisional refusals to the 
International Bureau 
Notification of invalidation of the effects of an international 
registration to the International Bureau 
Request for conversion of an international registration into 
a national trade mark application or into a designation of 
Member States 
Transformation of an international registration designating the 
Union into an EU trade mark application 

Article 30 

Article 31 
Article 32 
Article 33 

Article 34 

Article 35 

Article 36 

TITLE XIV 
FINAL PROVISIONS 
Article 37 
Article 38 
Article 39 

Transitional measures 
Repeal 
Entry into force and application 

269

269
270

270
270
271

272
272
272
272

273

273

273
273

274

275
276
276

277

278

278

279

280
280
280
280

248

Commission  implementing Regulation  (eu) 2018/626

COMMISSION IMPLEMENTING REGULATION (EU) 
2018/626 of 5 March 2018 
laying down detailed rules for implementing 
certain provisions of Regulation (EU) 2017/1001 
of the European Parliament and of the Council 
on the European Union trade mark, and repealing 
Implementing Regulation (EU) 2017/1431

THE EUROPEAN COMMISSION,

Having regard to the Treaty on the Functioning of the European Union,

Having regard to Regulation (EU) 2017/1001 of the European Parliament and 
of the Council of 14 June 2017 on the European Union trade mark (13), and in 
particular Article 20(6), Article 31(4), Article 35(2), Article 38(4), Article 39(6), 
Article  44(5),  Article  50(9),  Article  51(3),  the  second  subparagraph  of  Article 
54(3),  the  second  subparagraph  of  Article  55(1),  Article  56(8),  Article  57(5), 
Article  75(3),  Article  84(3),  the  first  subparagraph  of  Article  109(2),  Article 
116(4), Article 117(3), Article 140(6), Article 146(11), the second subparagraph 
of Article 161(2), Article 184(9), Article 186(2), Article 187(2), Article 192(6), 
Article 193(8), Article 198(4), Article 202(10) and Article 204(6) thereof, 

Whereas:

(1)  Council Regulation (EC) No 40/94 (14), which was codified as Regulation 
(EC) No 207/2009, created a system specific to the Union for the protection of 
trade marks to be obtained at the level of the Union on the basis of an applica-
tion to the European Union Intellectual Property Office (‘the Office’).

(13) OJ L 154, 16.6.2017, p. 1.

(14) Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ L 11, 

14.1.1994, p. 1).

The EC Implementing and Delegated Regulations 249

(2)  Regulation (EU) 2015/2424 of the European Parliament and the Council 
(15) aligned the powers conferred upon the Commission under Regulation (EC) 
No 207/2009 with Articles 290 and 291 of the Treaty on the Functioning of the 
European Union. In order to conform with the new legal framework resulting 
from  that  alignment,  Commission  Delegated  Regulation  (EU)  2017/1430  (16) 
and Commission Implementing Regulation (EU) 2017/1431 (17) were adopted.

(3)  Council  Regulation  (EC)  No  207/2009  (18)  was  codified  as  Regulation 
(EU) 2017/1001. For reasons of clarity and simplification, the references con-
tained in an Implementing Regulation should reflect the renumbering of Arti-
cles resulting from such a codification of the relevant basic act. Implementing 
Regulation (EU) 2017/1431 should therefore be repealed and the provisions of 
that Implementing Regulation should be laid down, with updated references to 
Regulation (EU) 2017/1001, in this Regulation.

In the interest of clarity, legal certainty and efficiency, and with a view to 
(4) 
facilitating the filing of EU trade mark applications, it is of essential importance 
to specify, in a clear and exhaustive manner while avoiding unnecessary admin-
istrative burdens, the mandatory and optional particulars to be contained in an 
application for an EU trade mark.

(5)  Regulation  (EU)  2017/1001  no  longer  requires  the  representation  of 
a mark to be graphic, as long as it enables the competent authorities and the 
public to determine with clarity and precision the subject matter of protection. 
It is therefore necessary, in order to ensure legal certainty, to clearly affirm that 
the precise subject matter of the exclusive right conferred by the registration 
is defined by the representation. The representation should, where appropriate, 
be complemented by an indication of the type of the mark concerned. It may 
be complemented by a description of the sign in appropriate cases. Such an 
indication or description should accord with the representation.

(15) Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 
amending  Council  Regulation  (EC)  No  207/2009  on  the  Community  trade  mark  and  Commission 
Regulation  (EC)  No  2868/95  implementing  Council  Regulation  (EC)  No  40/94  on  the  Community 
trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office 
for Harmonization in the Internal Market (Trade Marks and Designs) (OJ L 341, 24.12.2015, p. 21).

(16) Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regula-
tion (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations 
(EC) No 2868/95 and (EC) No 216/96 (OJ L 205, 8.8.2017, p. 1).

(17) Commission Implementing Regulation (EU) 2017/1431 of 18 May 2017 laying down detailed rules 
for implementing certain provisions of Council Regulation (EC) No 207/2009 on the European Union 
trade mark (OJ L 205, 8.8.2017, p. 39).

(18) Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ L 78, 

24.3.2009, p. 1).

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Commission  implementing Regulation  (eu) 2018/626

(6)  Moreover,  in  order  to  ensure  consistency  in  the  process  of  filing  an  EU 
trade mark application and in order to enhance the effectiveness of clearance 
searches, it is appropriate to establish general principles to which the repre-
sentation of every mark must conform, as well as lay down specific rules and 
requirements for the representation of certain types of trade mark, in accord-
ance with the trade mark’s specific nature and attributes.

(7)  The  introduction  of  technical  alternatives  to  graphic  representation,  in 
line with new technologies, derives from the necessity of modernisation, bring-
ing  the  registration  process  closer  to  technical  developments.  At  the  same 
time, the technical specifications for filing a representation of the trade mark, 
including representations filed electronically, should be laid down with a view 
to ensuring that the EU trade mark system remains interoperable with the sys-
tem established by the Protocol relating to the Madrid Agreement concerning 
the international registration of marks, adopted at Madrid on 27 June 1989 (19) 
(Madrid Protocol). In accordance with Regulation (EU) 2017/1001, and for the 
sake of increased flexibility and quicker adaptation to technological advances, 
it should be left to the Executive Director of the Office to lay down the technical 
specifications for marks filed electronically.

(8) 
It  is  appropriate  to  streamline  proceedings  so  as  to  reduce  administra-
tive burdens in the filing and process of priority and seniority claims. It should 
therefore not be necessary any more to submit certified copies of the previ-
ous  application  or  registration.  Furthermore,  the  Office  should  no  longer  be 
required to include a copy of the prior trade mark application in the file in the 
case of a priority claim.

(9)  Following the abolition of the requirement of a graphic representation of 
a  trade  mark,  certain  types  of  trade  marks  can  be  represented  in  electronic 
format and accordingly, their publication using conventional means is no longer 
suitable. In order to guarantee the publication of all the information concerning 
an  application,  which  is  required  for  reasons  of  transparency  and  legal  cer-
tainty, access to the representation of the trade mark by way of a link to the 
Office’s electronic Register should be recognised as a valid form of representa-
tion of the sign for publication purposes.

(10)  For the same reasons, it should also be permissible for the Office to issue 
certificates of registration in which the reproduction of the trade mark is sub-
stituted by an electronic link. Furthermore, for certificates issued after the reg-
istration, and to cater for requests made at a time when registration particulars 
may  have  changed,  it  is  appropriate  to  provide  for  the  possibility  of  issuing 

(19) OJ L 296, 14.11.2003, p. 22.

The EC Implementing and Delegated Regulations 251

updated versions of the certificate, where relevant subsequent entries in the 
Register are indicated.

(11)  Practical experience in applying the former regime revealed the need to 
clarify certain provisions, in particular in relation to partial transfers and partial 
surrenders, in order to ensure clarity and legal certainty.

(12)  In order to ensure legal certainty, while keeping a certain level of flexibil-
ity, it is necessary to establish a minimum content of the regulations governing 
the use of EU collective marks and of EU certification marks submitted pursu-
ant to Regulation (EU) 2017/1001, with the purpose of enabling market opera-
tors to avail themselves of this new type of trade mark protection.

(13)  Maximum rates for representation costs incurred by the successful party 
to proceedings before the Office should be specified, taking into account the 
need to ensure that the obligation to bear the costs may not be misused, inter 
alia, for tactical reasons by the other party.

(14)  For reasons of efficiency, electronic publications by the Office should be 
allowed.

(15)  It is necessary to ensure an effective and efficient exchange of informa-
tion between the Office and the authorities of the Member States in the context 
of administrative cooperation, taking appropriate account of the restrictions to 
which the inspection of files is subject.

(16)  The  requirements  concerning  requests  for  conversion  should  ensure 
a smooth and effective interface between the EU trade mark system and the 
national trade mark systems.

(17)  In  order  to  streamline  proceedings  before  the  Office,  it  should  be  pos-
sible to limit the submission of translations to those parts of documents that 
are relevant to the proceedings. For the same purpose, the Office should be 
authorised to require proof that a translation corresponds to the original only 
in the event of doubt.

(18)  For  reasons  of  efficiency,  certain  decisions  of  the  Office  in  relation  to 
oppositions or applications for the revocation or a declaration of invalidity of 
an EU trade mark should be taken by a single member.

(19)  Due  to  the  accession  of  the  Union  to  the  Madrid  Protocol,  it  is  neces-
sary that the detailed requirements governing the procedures concerning the 
international registration of marks be entirely consistent with the rules of that 
Protocol.

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Commission  implementing Regulation  (eu) 2018/626

(20)  Implementing  Regulation  (EU)  2017/1431  replaced  the  rules  previously 
laid down in Commission Regulation (EC) No 2868/95 (20) which was therefore 
repealed. Notwithstanding that repeal, certain proceedings initiated before the 
date of applicability of Implementing Regulation (EU) 2017/1431 should con-
tinue to be governed until their conclusion by specific provisions of Regulation 
(EC) No 2868/95.

(21)  The measures provided for in this Regulation are in accordance with the 
opinion of the Committee on Implementation Rules,

HAS ADOPTED THIS REGULATION:

TITLE I 
GENERAL PROVISIONS

Article 1
Subject matter

This Regulation lays down rules specifying:

the details to be contained in an application for an EU trade mark to be 

(a) 
filed at the European Union Intellectual Property Office (‘the Office’);

(b) 
the  documentation  required  to  claim  the  priority  of  a  previous  applica-
tion and to claim seniority, and the evidence to be filed to claim an exhibition 
priority;

the details to be contained in the publication of an application for an EU 

(c) 
trade mark;

the content of a declaration of division of an application, how the Office 
(d) 
has to process such a declaration, and the details to be contained in the publi-
cation of the divisional application;

(e) 

the content and form of the certificate of registration;

the  content  of  a  declaration  of  division  of  a  registration  and  how  the 

(f) 
Office has to process such a declaration;

(20) Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation 

(EC) No 40/94 on the Community trade mark (OJ L 303, 15.12.1995, p. 1).

The EC Implementing and Delegated Regulations 253

the details to be contained in requests for alteration and for the change of 

(g) 
name or address;

(h) 
the content of an application for registration of a transfer, the documenta-
tion required to establish a transfer, and how to process applications for partial 
transfers;

the details to be contained in a declaration of surrender and the required 

(i) 
documentation to establish a third party’s agreement;

the details to be contained in the regulations governing use of an EU col-

(j) 
lective mark and those governing use of an EU certification mark;

the  maximum  rates  for  costs  essential  to  proceedings  and  actually 

(k) 
incurred;

certain details concerning publications in the European Union Trade Marks 

(l) 
Bulletin and the Official Journal of the Office;

(m)  the detailed arrangements as to how the Office and the authorities of the 
Member States are to exchange information between each other and open files 
for inspection;

the details to be contained in requests for conversion and in the publica-

(n) 
tion of a request for conversion;

(o) 
the extent to which supporting documents to be used in written proceed-
ings before the Office may be filed in any official language of the Union, the 
need to supply a translation and the requisite standards of translations;

the decisions to be taken by single members of the Opposition and Cancel-

(p) 
lation Divisions;

(q)  concerning the international registration of marks:

(i) 

the form to be used for the filing of an international application;

(ii) 

the facts and decisions of invalidity to be notified to the International 
Bureau of the World Intellectual Property Organisation (‘the Interna-
tional Bureau’) and the relevant time of such notification;

(iii)  the detailed requirements regarding requests for territorial extension 

subsequent to international registration;

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Commission  implementing Regulation  (eu) 2018/626

(iv)  the details to be contained in a seniority claim for an international 
registration and the details of the information to be notified to the 
International Bureau;

(v) 

the details to be contained in the notification of ex officio provisional 
refusal of protection to be sent to the International Bureau;

(vi)  the details to be contained in the final grant or refusal of protection;

(vii)  the details to be contained in the notification of invalidation;

(viii)  the details to be contained in the requests for conversion of an inter-

national registration and in the publication of such requests;

(ix)  the details to be contained in an application for transformation.

TITLE II 
APPLICATION PROCEDURE

Article 2
Content of the application

EUTMR 
Art. 31, 
41, 76, 85, 
119, 120 
EUTMDR 
Art. 73 
EUTMIR 
Art. 16, 17 

1. 

The application for an EU trade mark shall contain:

(a)  a request for registration of the trade mark as an EU trade mark;

the name and address of the applicant and the State in which that appli-
(b) 
cant is domiciled or has a seat or an establishment. Names of natural persons 
shall be indicated by the person’s family name(s) and given name(s). Names 
of  legal  entities,  as  well  as  bodies  falling  under  Article  3  of  Regulation  (EU) 
2017/1001,  shall  be  indicated  by  their  official  designation  and  include  the 
legal  form  of  the  entity,  which  may  be  abbreviated  in  a  customary  manner. 
The company’s national identification number may also be specified if avail-
able.  The  Office  may  require  the  applicant  to  provide  telephone  numbers  or 
other contact details for communication by electronic means as defined by the 
Executive Director. Only one address shall, in principle, be indicated for each 
applicant. Where several addresses are indicated, only the address mentioned 
first shall be taken into account, except where the applicant designates one of 
the addresses as an address for service. Where an identification number has 
already been given by the Office, it shall be sufficient for the applicant to indi-
cate that number and the name of the applicant;

The EC Implementing and Delegated Regulations 255

(c)  a list of the goods or services for which the trade mark is to be registered, 
in accordance with Article 33(2) of Regulation (EU) 2017/1001. That list may be 
selected, in whole or in part, from a database of acceptable terms made avail-
able by the Office;

(d)  a  representation  of  the  trade  mark  in  accordance  with  Article  3  of  this 
Regulation;

(e)  where the applicant has appointed a representative, the name and busi-
ness address of that representative or the identification number in accordance 
with point (b); where the representative has more than one business address or 
where there are two or more representatives with different business addresses, 
only  the  first-mentioned  address  shall  be  taken  into  account  as  an  address 
for service unless the application indicates which address is to be used as an 
address for service;

(f)  where the priority of a previous application is claimed pursuant to Article 
35 of Regulation (EU) 2017/1001, a declaration to that effect, stating the date 
on which and the country in or for which the previous application was filed;

(g)  where exhibition priority is claimed pursuant to Article 38 of Regulation 
(EU) 2017/1001, a declaration to that effect, stating the name of the exhibition 
and the date of the first display of the goods or services;

(h)  where  the  seniority  of  one  or  more  earlier  trade  marks,  registered  in 
a Member State, including a trade mark registered in the Benelux countries or 
registered under international arrangements having effect in a Member State, 
as referred to in Article 39(1) of Regulation (EU) 2017/1001, is claimed together 
with the application, a declaration to that effect, stating the Member State or 
Member  States  in  or  for  which  the  earlier  trade  mark  is  registered,  the  date 
from which the relevant registration was effective, the number of the relevant 
registration, and the goods or services for which the trade mark is registered. 
Such declaration may also be made within the period referred to in Article 39(2) 
of Regulation (EU) 2017/1001;

(i)  where applicable, a statement that the application is for registration of 
an EU collective mark pursuant to Article 74 of Regulation (EU) 2017/1001 or 
for registration of an EU certification mark pursuant to Article 83 of Regulation 
(EU) 2017/1001;

(j) 
specification  of  the  language  in  which  the  application  has  been  filed, 
and  of  the  second  language  pursuant  to  Article  146(3)  of  Regulation  (EU) 
2017/1001;

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Commission  implementing Regulation  (eu) 2018/626

(k) 
the signature of the applicant or the applicant’s representative in accord-
ance  with  Article  63(1)  of  Commission  Delegated  Regulation  (EU)  2018/625 
(21);

(l)  where applicable, the request of a search report referred to in Article 43(1) 
or (2) of Regulation (EU) 2017/1001.

2. 
The application may include a claim that the sign has acquired distinctive 
character  through  use  within  the  meaning  of  Article  7(3)  of  Regulation  (EU) 
2017/1001, as well as an indication of whether this claim is meant as a princi-
pal or subsidiary one. Such claim may also be made within the period referred 
to in Article 42(2), second sentence, of Regulation (EU) 2017/1001.

3. 
The  application  for  an  EU  collective  mark  or  an  EU  certification  mark 
may include the regulations governing its use. Where such regulations are not 
included with the application, they shall be submitted within the period referred 
to in Article 75(1) and Article 84(1) of Regulation (EU) 2017/1001.

If  there  is  more  than  one  applicant,  the  application  may  contain  the 

4. 
appointment of one applicant or representative as common representative.

Article 3
Representation of the trade mark

EUTMR 
Art. 4, 31

1. 
The trade mark shall be represented in any appropriate form using gen-
erally available technology, as long as it can be reproduced on the Register in 
a clear, precise, self-contained, easily accessible, intelligible, durable and objec-
tive manner so as to enable the competent authorities and the public to deter-
mine with clarity and precision the subject matter of the protection afforded to 
its proprietor.

2. 
The representation of the trade mark shall define the subject matter of 
the registration. Where the representation is accompanied by a description pur-
suant  to  paragraph  3(d),  (e),  (f)(ii),  (h)  or  paragraph  4,  such  description  shall 
accord with the representation and shall not extend its scope.

3.  Where  the  application  concerns  any  of  the  trade  mark  types  listed  in 
points (a) to (j), it shall contain an indication to that effect. Without prejudice 

(21) Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 
2017/1001 of the European Parliament and of the Council on the European Union trade mark and 
repealing Delegated Regulation (EU) 2017/1430 (OJ L 104, 24.4.2018, p. 1).

The EC Implementing and Delegated Regulations 257

to paragraphs 1 or 2, the type of the trade mark and its representation shall 
accord with each other as follows:

(a) 
in  the  case  of  a  trade  mark  consisting  exclusively  of  words  or  letters, 
numerals,  other  standard  typographic  characters  or  a  combination  thereof 
(word mark), the mark shall be represented by submitting a reproduction of the 
sign in standard script and layout, without any graphic feature or colour;

(b) 
in  the  case  of  a  trade  mark  where  non-standard  characters,  stylisation 
or layout, or a graphic feature or a colour are used (figurative mark), including 
marks  that  consist  exclusively  of  figurative  elements  or  of  a  combination  of 
verbal and figurative elements, the mark shall be represented by submitting 
a reproduction of the sign showing all its elements and, where applicable, its 
colours;

in  the  case  of  a  trade  mark  consisting  of,  or  extending  to,  a  three-
(c) 
dimensional shape, including containers, packaging, the product itself or their 
appearance (shape mark), the mark shall be represented by submitting either 
a  graphic  reproduction  of  the  shape,  including  computer-generated  imaging, 
or a photographic reproduction. The graphic or photographic reproduction may 
contain different views. Where the representation is not provided electronically, 
it may contain up to six different views;

in  the  case  of  a  trade  mark  consisting  of  the  specific  way  in  which  the 
(d) 
mark is placed or affixed on the goods (position mark), the mark shall be repre-
sented by submitting a reproduction which appropriately identifies the position 
of the mark and its size or proportion with respect to the relevant goods. The 
elements which do not form part of the subject matter of the registration shall 
be visually disclaimed preferably by broken or dotted lines. The representation 
may be accompanied by a description detailing how the sign is affixed on the 
goods;

in  the  case  of  a  trade  mark  consisting  exclusively  of  a  set  of  elements 
(e) 
which  are  repeated  regularly  (pattern  mark),  the  mark  shall  be  represented 
by submitting a reproduction showing the pattern of repetition. The represen-
tation  may  be  accompanied  by  a  description  detailing  how  its  elements  are 
repeated regularly;

(f) 

in the case of a colour mark,

(i)  where the trade mark consists exclusively of a single colour without con-
tours, the mark shall be represented by submitting a reproduction of the colour 
and an indication of that colour by reference to a generally recognised colour 
code;

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Commission  implementing Regulation  (eu) 2018/626

(ii)  where  the  trade  mark  consists  exclusively  of  a  combination  of  colours 
without contours, the mark shall be represented by submitting a reproduction 
that shows the systematic arrangement of the colour combination in a uniform 
and  predetermined  manner  and  an  indication  of  those  colours  by  reference 
to  a  generally  recognised  colour  code.  A  description  detailing  the  systematic 
arrangement of the colours may also be added;

(g) 
in the case of a trade mark consisting exclusively of a sound or combina-
tion of sounds (sound mark), the mark shall be represented by submitting an 
audio file reproducing the sound or by an accurate representation of the sound 
in musical notation;

(h) 
in the case of a trade mark consisting of, or extending to, a movement or 
a change in the position of the elements of the mark (motion mark), the mark 
shall be represented by submitting a video file or by a series of sequential still 
images showing the movement or change of position. Where still images are 
used, they may be numbered or accompanied by a description explaining the 
sequence;

in the case of a trade mark consisting of, or extending to, the combina-
(i) 
tion of image and sound (multimedia mark), the mark shall be represented by 
submitting an audiovisual file containing the combination of the image and the 
sound;

(j) 
in the case of a trade mark consisting of elements with holographic charac-
teristics (hologram mark), the mark shall be represented by submitting a video 
file or a graphic or photographic reproduction containing the views which are 
necessary to sufficiently identify the holographic effect in its entirety.

4.  Where the trade mark is not covered by any of the types listed in para-
graph  3,  its  representation  shall  comply  with  the  standards  set  out  in  para-
graph 1 and may be accompanied by a description.

5.  Where the representation is provided electronically, the Executive Director 
of the Office shall determine the formats and size of the electronic file as well 
as any other relevant technical specifications.

6.  Where  the  representation  is  not  provided  electronically,  the  trade  mark 
shall  be  reproduced  on  a  single  sheet  of  paper  separate  from  the  sheet  on 
which the text of the application appears. The single sheet on which the mark is 
reproduced shall contain all the relevant views or images and shall not exceed 
DIN A4 size (29,7 cm high, 21 cm wide). A margin of at least 2,5 cm shall be left 
all around.

The EC Implementing and Delegated Regulations 259

7.  Where the correct orientation of the mark is not obvious, it shall be indi-
cated by adding the word ‘top’ to each reproduction.

8. 

The reproduction of the mark shall be of such quality as to enable it to be:

(a) 

reduced to a size of not less than 8 cm wide by 8 cm high; or

(b)  enlarged to a size of not more than 8 cm wide by 8 cm high.

The filing of a sample or a specimen shall not constitute a proper repre-

9. 
sentation of a trade mark.

Article 4
Claiming priority

1.  Where the priority of one or more previous applications is claimed together 
with the application pursuant to Article 35 of Regulation (EU) 2017/1001, the 
applicant  shall  indicate  the  file  number  of  the  previous  application  and  file 
a copy of it within three months of the filing date. That copy shall state the date 
of filing of the previous application.

EUTMR 
Art. 34, 36, 
37, 41, 146

2.  Where the language of the previous application for which priority is claimed 
is not one of the languages of the Office, the applicant shall, if required by the 
Office, provide the Office with a translation of the previous application into the 
language of the Office used as the first or second language of the application, 
within a period specified by the Office.

Paragraphs 1 and 2 shall apply mutatis mutandis where the priority claim 

3. 
relates to one or more previous registrations.

Article 5
Exhibition priority

Where  an  exhibition  priority  is  claimed  together  with  the  application  pursu-
ant to Article 38(1) of Regulation (EU) 2017/1001, the applicant shall, within 
three months of the filing date, file a certificate issued at the exhibition by the 
authority responsible for the protection of industrial property at the exhibition. 
That certificate shall attest that the mark was used for the goods or services 
covered by the application. It shall also state the opening date of the exhibition 
and the date of first public use, if different from the opening date of the exhibi-
tion. The certificate shall be accompanied by an identification of the actual use 
of the mark, duly certified by the authority.

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Commission  implementing Regulation  (eu) 2018/626

Article 6
Claiming seniority of a national trade mark before registration of the EU 
trade mark

EUTMR 
Art. 41

Where the seniority of an earlier registered trade mark, as referred to in Article 
39(1)  of  Regulation  (EU)  2017/1001,  is  claimed  pursuant  to  Article  39(2)  of 
Regulation (EU) 2017/1001, the applicant shall submit a copy of the relevant 
registration  within  three  months  of  the  receipt  of  the  seniority  claim  by  the 
Office.

EUTMR 
Art. 30-33, 
44, 116, 
147 
EUTMIR 
Art. 19 

Article 7
Content of the publication of an application

The publication of the application shall contain:

(a) 

the applicant’s name and address;

(b)  where applicable, the name and business address of the representative 
appointed by the applicant other than a representative falling within the first 
sentence of Article 119(3) of Regulation (EU) 2017/1001. Where there is more 
than one representative with the same business address, only the name and 
business address of the first-named representative shall be published and it 
shall be followed by the words ‘and others’. Where there are two or more rep-
resentatives  with  different  business  addresses,  only  the  address  for  service 
determined  pursuant  to  Article  2(1)(e)  of  this  Regulation  shall  be  published. 
Where an association of representatives is appointed in accordance with Arti-
cle 74(8) of Delegated Regulation (EU) 2018/625, only the name and business 
address of the association shall be published;

(c) 
the representation of the mark, together with the elements and descrip-
tions referred to in Article 3 where applicable. Where the representation has 
been provided in the form of an electronic file, it shall be made accessible by 
means of a link to that file;

(d) 
the list of goods or services, grouped according to the classes of the Nice 
Classification, each group being preceded by the number of the class of that 
classification to which that group of goods or services belongs, and presented 
in the order of the classes of that classification;

(e) 

the date of filing and the file number;

(f)  where applicable, particulars of the claim of priority filed by the applicant 
pursuant to Article 35 of Regulation (EU) 2017/1001;

The EC Implementing and Delegated Regulations 261

(g)  where applicable, particulars of the claim of exhibition priority filed by the 
applicant pursuant to Article 38 of Regulation (EU) 2017/1001;

(h)  where applicable, particulars of the claim of seniority filed by the appli-
cant pursuant to Article 39 of Regulation (EU) 2017/1001;

(i)  where applicable, a statement pursuant to Article 7(3) of Regulation (EU) 
2017/1001  that  the  mark  has  become  distinctive  in  relation  to  the  goods  or 
services for which registration is requested in consequence of the use which 
has been made of it;

(j)  where applicable, a statement that the application is for an EU collective 
mark or an EU certification mark;

(k)  an indication of the language in which the application was filed and of the 
second language which the applicant has indicated pursuant to Article 146(3) 
of Regulation (EU) 2017/1001;

(l)  where applicable, a statement that the application results from a trans-
formation  of  an  international  registration  designating  the  Union  pursuant  to 
Article  204(2)  of  Regulation  (EU)  2017/1001,  together  with  the  date  of  the 
international registration pursuant to Article 3(4) of the Madrid Protocol or the 
date on which the territorial extension to the Union made subsequently to the 
international registration pursuant to Article 3ter(2) of the Madrid Protocol was 
recorded in the international register and, where applicable, the priority date of 
the international registration.

Article 8
Division of the application

1.  A declaration of the division of the application pursuant to Article 50 of 
Regulation (EU) 2017/1001 shall contain:

(a) 

the file number of the application;

the name and address of the applicant in accordance with Article 2(1)(b) 

(b) 
of this Regulation;

(c) 
the list of goods or services subject to the divisional application, or, where 
the division into more than one divisional application is sought, the list of goods 
or services for each divisional application;

(d) 

the list of goods or services which are to remain in the original application.

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2. 
The Office shall establish a separate file for each divisional application, 
which shall consist of a complete copy of the file of the original application, 
including the declaration of division and the correspondence relating thereto. 
The Office shall assign a new application number to each divisional application.

The publication of each divisional application shall contain the indications 

3. 
and elements laid down in Article 7.

TITLE III 
REGISTRATION PROCEDURE

Article 9
Certificate of registration

EUTMIR 
Art. 3 

The certificate of registration issued in accordance with Article 51(2) of Regu-
lation (EU) 2017/1001 shall contain the entries in the Register listed in Article 
111(2) of Regulation (EU) 2017/1001 and a statement to the effect that those 
entries  have  been  recorded  in  the  Register.  Where  the  representation  of  the 
mark is provided in the form of an electronic file, the relevant entry shall be 
made accessible by means of a link to that file. The certificate shall be com-
plemented, where applicable, by an extract showing all entries to be recorded 
in the Register in accordance with Article 111(3) of Regulation (EU) 2017/1001 
and  a  statement  to  the  effect  that  those  entries  have  been  recorded  in  the 
Register.

Article 10
Content of the request for alteration of a registration

A request for alteration of a registration pursuant to Article 54(2) of Regulation 
(EU) 2017/1001 shall contain:

(a) 

the registration number of the EU trade mark;

the name and the address of the proprietor of the EU trade mark in accord-

(b) 
ance with Article 2(1)(b) of this Regulation;

(c)  an indication of the element in the representation of the EU trade mark 
to be altered and that element in its altered version in accordance with Article 
54(3) of Regulation (EU) 2017/1001;

(d)  a representation of the EU trade mark as altered, in accordance with Arti-
cle 3 of this Regulation.

The EC Implementing and Delegated Regulations 263

Article 11
Declaration of the division of a registration

1.  A declaration of the division of a registration pursuant to Article 56(1) of 
Regulation (EU) 2017/1001 shall contain:

(a) 

the registration number of the EU trade mark;

the name and address of the proprietor of the EU trade mark in accord-

(b) 
ance with Article 2(1)(b) of this Regulation;

(c) 
the list of goods or services which are to form the divisional registration, 
or, where the division into more than one divisional registration is sought, the 
list of goods or services for each divisional registration;

(d) 

the list of goods or services which are to remain in the original registration.

2. 
The  Office  shall  establish  a  separate  file  for  the  divisional  registration, 
which shall consist of a complete copy of the file of the original registration, 
including the declaration of division and the correspondence relating thereto. 
The Office shall assign a new registration number to the divisional registration.

Article 12
Content of a request for the change of the name or address of the 
proprietor of an EU trade mark or of the applicant for an EU trade mark

A request for the change of the name or address of the proprietor of a regis-
tered EU trade mark pursuant to Article 55(1) of Regulation (EU) 2017/1001 
shall contain:

(a) 

the registration number of the EU trade mark;

the  name  and  the  address  of  the  proprietor  of  the  EU  trade  mark  as 
(b) 
recorded  in  the  Register,  unless  an  identification  number  has  already  been 
given by the Office to the proprietor, in which case it shall be sufficient for the 
applicant to indicate that number and the proprietor’s name;

the  indication  of  the  new  name  or  address  of  the  proprietor  of  the  EU 

(c) 
trade mark, in accordance with Article 2(1)(b) of this Regulation.

Points (b) and (c) of the first subparagraph shall apply mutatis mutandis for the 
purposes of a request for the change of the name or address of the applicant 
for an EU trade mark. Such a request shall also contain the application number.

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TITLE IV 
TRANSFER

Article 13
Application for registration of a transfer

EUTMIR 
Art. 14 

1.  An application for registration of a transfer under Article 20(5) of Regula-
tion (EU) 2017/1001 shall contain:

(a) 

the registration number of the EU trade mark;

(b)  particulars of the new proprietor in accordance with Article 2(1)(b) of this 
Regulation;

(c)  where not all the registered goods or services are included in the transfer, 
particulars of the registered goods or services to which the transfer relates;

(d)  evidence  duly  establishing  the  transfer  in  accordance  with  Article  20(2) 
and (3) of Regulation (EU) 2017/1001;

(e)  where applicable, the name and business address of the representative 
of the new proprietor, to be set out in accordance with Article 2(1)(e) of this 
Regulation.

2. 
Points (b) to (e) of paragraph 1 shall apply mutatis mutandis for the pur-
poses  of  an  application  for  the  recording  of  a  transfer  of  an  EU  trade  mark 
application.

For the purposes of paragraph 1(d), any of the following shall constitute 

3. 
sufficient evidence of transfer:

the signing of the application for registration of the transfer by the regis-
(a) 
tered proprietor or a representative of that proprietor, and by the successor in 
title or a representative of that successor;

(b)  where the application is submitted by the registered proprietor or a rep-
resentative of that proprietor, a declaration signed by the successor in title or 
a representative of that successor agreeing to the registration of the transfer;

(c)  where  the  application  for  registration  is  submitted  by  the  successor  in 
title, a declaration, signed by the registered proprietor or a representative of 
that proprietor, that the registered proprietor agrees to the registration of the 
successor in title;

The EC Implementing and Delegated Regulations 265

(d) 
the  signing  of  a  completed  transfer  form  or  document,  as  laid  down  in 
Article 65(1)(e) of Delegated Regulation (EU) 2018/625, by the registered pro-
prietor or a representative of that proprietor and by the successor in title or 
a representative of that successor.

Article 14
Processing of applications for partial transfer

1.  Where the application for registration of a transfer relates only to some 
of the goods or services for which the mark is registered, the applicant shall 
distribute the goods or services in the original registration between the remain-
ing  registration  and  the  application  for  partial  transfer  so  that  the  goods  or 
services in the remaining registration and the new registration do not overlap.

EUTMR 
Art. 20, 21 
EUTMDR 
Art. 20

2. 
The Office shall establish a separate file for the new registration, which 
shall consist of a complete copy of the file of the original registration, including 
the application for registration of the partial transfer and the correspondence 
relating thereto. The Office shall assign a new registration number to the new 
registration.

3. 
Paragraphs 1 and 2 shall apply mutatis mutandis for the purposes of an 
application  to  record  a  transfer  of  an  EU  trade  mark  application.  The  Office 
shall assign a new application number to the new EU trade mark application.

TITLE V 
SURRENDER

Article 15
Surrender

1.  A  declaration  of  surrender  pursuant  to  Article  57(2)  of  Regulation  (EU) 
2017/1001 shall contain:

EUTMR 
Art. 22-25

(a) 

the registration number of the EU trade mark;

the name and address of the proprietor in accordance with Article 2(1)(b) 

(b) 
of this Regulation;

(c)  where  surrender  is  declared  only  for  some  of  the  goods  or  services  for 
which the mark is registered, an indication of the goods or services for which 
the mark is to remain registered.

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2.  Where a right of a third party relating to the EU trade mark is entered in 
the Register, a declaration of consent to the surrender, signed by the proprietor 
of that right or a representative of that proprietor, shall be sufficient proof of 
the third party’s agreement to the surrender.

TITLE VI 
EU COLLECTIVE MARKS AND CERTIFICATION MARKS

Article 16
Content of regulations governing the use of EU collective marks

EUTMR 
Art. 78, 79

The  regulations  governing  EU  collective  marks  referred  to  in  Article  75(1)  of 
Regulation (EU) 2017/1001 shall specify:

(a) 

the name of the applicant;

the object of the association or the object for which the legal person gov-

(b) 
erned by public law is constituted;

the  bodies  authorised  to  represent  the  association  or  the  legal  person 

(c) 
governed by public law;

(d) 

in the case of an association, the conditions for membership;

(e) 

the representation of the EU collective mark;

(f) 

the persons authorised to use the EU collective mark;

(g)  where appropriate, the conditions governing use of the EU collective mark, 
including sanctions;

(h) 
the goods or services covered by the EU collective mark including, where 
appropriate, any limitation introduced as a consequence of the application of 
Article 7(1)(j), (k) or (l) of Regulation (EU) 2017/1001;

(i)  where appropriate, the authorisation referred to in the second sentence of 
Article 75(2) of Regulation (EU) 2017/1001.

The EC Implementing and Delegated Regulations 267

Article 17
Content of regulations governing the use of EU certification marks

The regulations governing use of EU certification marks referred to in Article 84 
of Regulation (EU) 2017/1001 shall specify:

EUTMR 
Art. 87, 88

(a) 

the name of the applicant;

(b)  a declaration that the applicant complies with the requirements laid down 
in Article 83(2) of Regulation (EU) 2017/1001;

(c) 

the representation of the EU certification mark;

(d) 

the goods or services covered by the EU certification mark;

the characteristics of the goods or services to be certified by the EU certi-
(e) 
fication mark, such as the material, mode of manufacture of goods or perfor-
mance of services, quality or accuracy;

the conditions governing the use of the  EU  certification  mark,  including 

(f) 
sanctions;

(g) 

the persons authorised to use the EU certification mark;

(h)  how the certifying body is to test those characteristics and to supervise 
the use of the EU certification mark.

TITLE VII 
COSTS

Article 18
Maximum rates for costs

1.  Costs referred to in the first subparagraph of Article 109(2) of Regulation 
(EU) 2017/1001 shall be borne by the losing party on the basis of the following 
maximum rates:

(a)  where  the  successful  party  is  not  represented,  the  travel  and  subsist-
ence  costs  of  that  party  for  one  person  for  the  outward  and  return  journey 
between the place of residence or the place of business and the place where 
oral proceedings are held pursuant to Article 49 of Delegated Regulation (EU) 
2018/625, as follows:

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Commission  implementing Regulation  (eu) 2018/626

(i) 
the cost of the first-class rail fare including usual transport supplements 
where  the  total  distance  by  rail  does  not  exceed  800  km  or  the  cost  of  the 
tourist-class  airfare  where  the  total  distance  by  rail  exceeds  800  km  or  the 
route includes a sea crossing;

(ii)  subsistence costs as laid down in Article 13 of Annex VII to the Staff Regu-
lations of Officials of the Union and the Conditions of Employment of Other 
Servants of the Union, laid down in Council Regulation (EEC, Euratom, ECSC) No 
259/68 (22);

travel  costs  of  representatives  pursuant  to  Article  120(1)  of  Regulation 

(b) 
(EU) 2017/1001, at the rates provided for in point (a)(i) of this paragraph;

(c)  costs of representation, within the meaning of Article 120(1) of Regulation 
(EU) 2017/1001, incurred by the successful party, as follows:

(i) 

in opposition proceedings: EUR 300;

(ii) 

in proceedings relating to the revocation or invalidity of an EU trade 
mark: EUR 450;

(iii) 

in appeal proceedings: EUR 550;

(iv)  where oral proceedings have taken place to which the parties have 
been summoned pursuant to Article 49 of Delegated Regulation (EU) 
2018/625, the amount referred to in points (i), (ii) or (iii) increased by 
EUR 400.

2.  Where there are several applicants or proprietors of the EU trade mark 
application or registration or where there are several opposing parties or appli-
cants for revocation or a declaration of invalidity that have filed the opposition 
or  application  for  revocation  or  a  declaration  of  invalidity  jointly,  the  losing 
party  shall  bear  the  costs  referred  to  in  paragraph  1(a)  for  one  such  person 
only.

3.  Where the successful party is represented by more than one representa-
tive  within  the  meaning  of  Article  120(1)  of  Regulation  (EU)  2017/1001,  the 
losing party shall bear the costs referred to in paragraph 1(b) and (c) of this 
Article for one such person only.

(22) Regulation (EEC, Euratom, ECSC) No 259/68 of the Council of 29 February 1968 laying down the 
Staff Regulations of Officials and the Conditions of Employment of Other Servants of the European 
Communities and instituting special measures temporarily applicable to officials of the Commission 
(Staff Regulations of Officials) (OJ L 56, 4.3.1968, p. 1).

The EC Implementing and Delegated Regulations 269

4. 
The losing party shall not be obliged to reimburse the successful party for 
any costs, expenses and fees relating to proceedings before the Office other 
than those referred to in paragraphs 1, 2 and 3.

TITLE VIII 
PERIODICAL PUBLICATIONS

Article 19
Periodical publications

1.  Where particulars are published in the European Union Trade Marks Bul-
letin in accordance with Regulation (EU) 2017/1001, Delegated Regulation (EU) 
2018/625 or this Regulation, the date of issue shown in the European Union 
Trade Marks Bulletin shall be taken as the date of publication of the particulars.

EUTMR 
Art. 116, 
147 
EUTMIR 
Art. 7 

2. 
To the extent that the entries regarding the registration of a trade mark 
contain no changes as compared to the publication of the application, the pub-
lication of such entries shall be made by way of a reference to the particulars 
contained in the publication of the application.

The Office may make editions of the Official Journal of the Office publicly 

3. 
available by electronic means.

TITLE IX 
ADMINISTRATIVE COOPERATION

Article 20
Exchange of information between the Office and the authorities of the 
Member States

1.  Without prejudice to Article 152 of Regulation (EU) 2017/1001, the Office 
and the central industrial property offices of the Member States, including the 
Benelux Office for Intellectual Property, shall, upon request, communicate to 
each other relevant information about the filing of applications for EU trade 
marks or national marks and about proceedings relating to such applications 
and the marks registered as a result thereof.

EUTMR 
Art. 117, 
118, 128, 
141, 151

The  Office  and  the  courts  or  authorities  of  the  Member  States  shall 
2. 
exchange information for the purposes of Regulation (EU) 2017/1001 directly 
or through the central industrial property offices of the Member States.

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3. 
Expenditure in respect of communications under paragraphs 1 and 2 shall 
be chargeable to the authority making the communications. Such communica-
tions shall be exempt from fees.

Article 21
Opening of files for inspection

EUTMR 
Art. 115, 
117 
EUTMIR 
Art. 20 

1. 
Inspection  of  files  relating  to  EU  trade  mark  applications  or  registered 
EU trade marks by courts or authorities of the Member States shall be of the 
original documents or of copies thereof, or of technical means of storage if the 
files are stored in this way.

2. 
The Office shall, at the time of transmission of files relating to EU trade 
marks applied for or registered, or copies thereof, to the courts or public pros-
ecutors’  offices  of  the  Member  States,  indicate  the  restrictions  to  which  the 
inspection of those files is subject pursuant to Article 114 of Regulation (EU) 
2017/1001.

3.  Courts  or  public  prosecutors’  offices  of  the  Member  States  may,  in  the 
course  of  proceedings  before  them,  open  files  or  copies  thereof  transmitted 
to them by the Office to inspection by third parties. Such inspection shall be 
subject to Article 114 of Regulation (EU) 2017/1001.

TITLE X 
CONVERSION

Article 22
Content of a request for conversion

EUTMR 
Art. 140, 
141

A request for conversion of an EU trade mark application or a registered EU 
trade mark into a national trade mark application pursuant to Article 139 of 
Regulation (EU) 2017/1001 shall contain:

the name and the address of the applicant for conversion in accordance 

(a) 
with Article 2(1)(b) of this Regulation;

the  filing  number  of  the  EU  trade  mark  application  or  the  registration 

(b) 
number of the EU trade mark;

(c)  an  indication  of  the  ground  for  conversion  in  accordance  with  Article 
139(1)(a) or (b) of Regulation (EU) 2017/1001;

The EC Implementing and Delegated Regulations 271

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

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

(f)  where conversion is requested, pursuant to Article 139(6) of Regulation 
(EU)  2017/1001,  on  the  grounds  that  an  EU  trade  mark  has  ceased  to  have 
effect as a result of a decision of an EU trade mark court, an indication of the 
date on which that decision became final, and a copy of the decision, which 
may be submitted in the language in which the decision was given.

Article 23
Content of the publication of a request for conversion

The publication of a request for conversion in accordance with Article 140(2) of 
Regulation (EU) 2017/1001 shall contain:

the  filing  number  or  the  registration  number  of  the  EU  trade  mark  in 

(a) 
respect of which conversion is requested;

EUTMR 
Art. 116, 
139 
EUTMIR 
Art. 19, 22 

(b)  a reference to the previous publication of the request or to the registration 
in the European Union Trade Marks Bulletin;

(c)  an indication of the Member State or Member States in respect of which 
conversion has been requested;

(d)  where the request does not relate to all of the goods or services for which 
the application has been filed or for which the EU trade mark has been regis-
tered, an indication of the goods or services for which conversion is requested;

(e)  where conversion is requested in respect of more than one Member State 
and the list of goods or services is not the same for all Member States, an indi-
cation of the respective goods or services for each Member State;

(f) 

the date of the request for conversion.

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TITLE XI 
LANGUAGES

Article 24
Filing of supporting documents in written proceedings

EUTMR 
Art. 97

Unless otherwise provided for in this Regulation or in Delegated Regulation (EU) 
2018/625, supporting documents to be used in written proceedings before the 
Office may be filed in any official language of the Union. Where the language 
of such documents is not the language of the proceedings as determined in 
accordance  with  Article  146  of  Regulation  (EU)  2017/1001,  the  Office  may, 
of its own motion or upon reasoned request by the other party, require that 
a translation be supplied, within a period specified by it, in that language.

Article 25
Standard of translations

EUTMR 
Art. 146 
EUTMIR 
Art. 4 

1.  Where a translation of a document is to be filed with the Office, the trans-
lation shall identify the document to which it refers and reproduce the struc-
ture and contents of the original document. Where a party has indicated that 
only  parts  of  the  document  are  relevant,  the  translation  may  be  limited  to 
those parts.

2.  Unless otherwise provided for in Regulation (EU) 2017/1001, in Delegated 
Regulation (EU) 2018/625 or in this Regulation, a document for which a trans-
lation is to be filed shall be deemed not to have been received by the Office in 
the following cases:

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

(b)  where the certificate referred to in Article 26 of this Regulation is not filed 
within the period specified by the Office.

Article 26
Legal authenticity of translations

EUTMR 
Art. 146

In  the  absence  of  evidence  or  indications  to  the  contrary,  the  Office  shall 
assume that a translation corresponds to the relevant original text. In the event 
of doubt, the Office may require the filing, within a specific period, of a certifi-
cate that the translation corresponds to the original text.

The EC Implementing and Delegated Regulations 273

TITLE XII 
ORGANISATION OF THE OFFICE

Article 27
Decisions of an Opposition Division or a Cancellation Division taken by 
a single member

Pursuant  to  Article  161(2)  or  Article  163(2)  of  Regulation  (EU)  2017/1001, 
a single member of an Opposition Division or of a Cancellation Division shall 
take the following types of decisions:

EUTMDR 
Art. 71

(a)  decisions on the apportionment of costs;

(b)  decisions to fix the amount of the costs to be paid pursuant to the first 
sentence of Article 109(7) of Regulation (EU) 2017/1001;

(c)  decisions  to  discontinue  the  proceedings  or  decisions  confirming  that 
there is no need to proceed to a decision on merits;

(d)  decisions  to  reject  an  opposition  as  inadmissible  before  expiry  of  the 
period referred to in Article 6(1) of Delegated Regulation (EU) 2018/625;

(e)  decisions to stay proceedings;

(f)  decisions to join or separate multiple oppositions pursuant to Article 9(1) 
of Delegated Regulation (EU) 2018/625.

TITLE XIII 
PROCEDURES CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS

Article 28
Form to be used for the filing of an international application

The form made available by the Office for the filing of an international applica-
tion, as referred to in Article 184(1) of Regulation (EU) 2017/1001 shall include 
all  the  elements  of  the  official  form  provided  by  the  International  Bureau. 
Applicants may also use the official form provided by the International Bureau.

EUTMR 
Art. 183 
EUTMDR 
Art. 65

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Commission  implementing Regulation  (eu) 2018/626

Article 29
Facts and decisions on invalidity to be notified to the International Bureau

EUTMR 
Art. 186

The  Office  shall  notify  the  International  Bureau  within  a  period  of  five 

1. 
years of the date of the international registration in the following cases:

(a)  where the EU trade mark application on which the international registra-
tion was based has been withdrawn, is deemed to be withdrawn or has been 
refused by a final decision, in respect of all or some of the goods or services 
listed in the international registration;

(b)  where  the  EU  trade  mark  on  which  the  international  registration  was 
based  has  ceased  to  have  effect  because  it  has  been  surrendered,  has  not 
been renewed, has been revoked, or has been declared invalid by the Office by 
a final decision or, on the basis of a counterclaim in infringement proceedings, 
by an EU trade mark court, in respect of all or some of the goods or services 
listed in the international registration;

(c)  where the EU trade mark application or the EU trade mark on which the 
international registration was based has been divided into two applications or 
registrations.

2. 

The notification referred to in paragraph 1 shall include:

(a) 

the number of the international registration;

(b) 

the name of the holder of the international registration;

the facts and decisions affecting the basic application or registration, as 

(c) 
well as the effective date of those facts and decisions;

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

(d) 
international registration;

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

in  the  case  referred  to  in  paragraph  1(c),  the  number  of  each  EU  trade 

(f) 
mark application or registration concerned.

The Office shall notify the International Bureau at the end of a period of 

3. 
five years of the date of the international registration in the following cases:

The EC Implementing and Delegated Regulations 275

(a)  where an appeal is pending against a decision of an examiner to refuse 
the  EU  trade  mark  application  on  which  the  international  registration  was 
based pursuant to Article 42 of Regulation (EU) 2017/1001;

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

(c)  where an application for revocation or an application for a declaration of 
invalidity is pending against the EU trade mark on which the international reg-
istration was based;

(d)  where  mention  has  been  made  in  the  Register  of  EU  trade  marks  that 
a  counterclaim  for  revocation  or  for  declaration  of  invalidity  has  been  filed 
before an EU trade mark court against the EU trade mark on which the inter-
national  registration  was  based,  but  no  mention  has  yet  been  made  in  the 
Register of the decision of the EU trade mark court on the counterclaim.

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

5. 
For the purposes of paragraphs 1 and 3, an EU trade mark on which the 
international registration was based shall include an EU trade mark registration 
resulting from an EU trade mark application on which the international applica-
tion was based.

Article 30
Request for territorial extension subsequent to international registration

1.  A request for territorial extension filed at the Office pursuant to Article 
187(1) of Regulation (EU) 2017/1001 shall meet the following requirements:

EUTMDR 
Art. 65

it is filed using one of the forms referred to in Article 31 of this Regulation 

(a) 
and contains all the indications and information required by the form used;

(b) 

it indicates the number of the international registration to which it relates;

the  list  of  goods  or  services  is  covered  by  the  list  of  goods  or  services 

(c) 
contained in the international registration;

(d) 
the  applicant  is  entitled,  based  on  the  indications  made  in  the  interna-
tional form, to make a designation subsequent to the international registration 
through the Office in accordance with Article 2(1)(ii), and Article 3ter(2) of the 
Madrid Protocol.

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Commission  implementing Regulation  (eu) 2018/626

2.  Where a request for territorial extension does not meet all of the require-
ments laid down in paragraph 1, the Office shall invite the applicant to remedy 
the deficiencies within such time limit as it may specify.

Article 31
Form to be used for a request for territorial extension

EUTMDR 
Art. 65 
EUTMIR 
Art. 30 

The form made available by the Office for a request for territorial extension 
subsequent  to  international  registration,  as  referred  to  in  Article  187(1)  of 
Regulation (EU) 2017/1001, shall include all the elements of the official form 
provided by the International Bureau. Applicants may also use the official form 
provided by the International Bureau.

Article 32
Seniority claims before the Office

1.  Without prejudice to Article 39(7) of Regulation (EU) 2017/1001, a senior-
ity claim pursuant to Article 192(1) of Regulation (EU) 2017/1001 shall contain:

(a) 

the registration number of the international registration;

the  name  and  address  of  the  holder  of  the  international  registration  in 

(b) 
accordance with Article 2(1)(b) of this Regulation;

(c)  an indication of the Member State or Member States in or for which the 
earlier trade mark is registered;

(d) 

the number and the filing date of the relevant registration;

(e)  an indication of the goods or services for which the earlier trade mark is 
registered and those in respect of which seniority is claimed;

(f)  a copy of the relevant registration certificate.

2.  Where the holder of the international registration is obliged to be repre-
sented in proceedings before the Office pursuant to Article 119(2) of Regulation 
(EU) 2017/1001, the seniority claim shall contain the appointment of a repre-
sentative within the meaning of Article 120(1) of Regulation (EU) 2017/1001.

3.  Where  the  Office  has  accepted  the  seniority  claim,  it  shall  inform  the 
International Bureau accordingly by communicating the following:

(a) 

the number of the international registration concerned;

The EC Implementing and Delegated Regulations 277

the name of the Member State or Member States in or for which the earlier 

(b) 
trade mark is registered;

(c) 

the number of the relevant registration;

(d) 

the date from which the relevant registration was effective.

Article 33
Notification of ex officio provisional refusals to the International Bureau

The  notification  of  an  ex  officio  provisional  refusal  of  protection  of  the 
1. 
international registration in whole or in part to be issued to the International 
Bureau pursuant to Article 193(2) and (5) of Regulation (EU) 2017/1001 shall, 
without prejudice to the requirements laid down in Article 193(3) and (4) of that 
Regulation, contain the following:

EUTMR 
Art. 7, 76, 
85

(a) 

the number of the international registration;

(b)  a reference to the provisions of Regulation (EU) 2017/1001 which are rel-
evant for the provisional refusal;

(c)  an indication that the provisional refusal of protection will be confirmed 
by a decision of the Office if the holder of the international registration does 
not overcome the grounds for refusal by submitting observations to the Office 
within a time limit of two months of the date on which the Offices issues the 
provisional refusal;

(d)  where the provisional refusal relates to only part of the goods or services, 
an indication of those goods or services.

2. 
In respect of each notification of an ex officio provisional refusal to the 
International Bureau, and provided that the time limit for entering an opposition 
has expired and that no notification of provisional refusal based on an opposi-
tion  has  been  issued  pursuant  to  Article  78(1)  of  Delegated  Regulation  (EU) 
2018/625, the Office shall inform the International Bureau of the following:

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

(b)  where  a  decision  to  refuse  protection  of  the  mark  has  become  final,  if 
applicable, following an appeal under Article 66 of Regulation (EU) 2017/1001 
or an action under Article 72 of Regulation (EU) 2017/1001, the fact that pro-
tection of the mark is refused in the Union;

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Commission  implementing Regulation  (eu) 2018/626

(c)  where the refusal pursuant to point (b) concerns only part of the goods or 
services, the goods or services for which the mark is protected in the Union.

Article 34
Notification of invalidation of the effects of an international registration 
to the International Bureau

The notification referred to in Article 198(3) of Regulation (EU) 2017/1001 shall 
bear a date and shall contain:

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

(b)  an indication of whether invalidation has been pronounced in the form of 
revocation of the rights of the holder of the international registration, of a dec-
laration that the trade mark is invalid on absolute grounds, or of a declaration 
that the trade mark is invalid on relative grounds;

(c)  a  statement  to  the  effect  that  the  invalidation  is  no  longer  subject  to 
appeal;

(d) 

the number of the international registration;

(e) 

the name of the holder of the international registration;

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

the date on which the invalidation was pronounced, together with an indi-

(g) 
cation of the date from when the invalidation became effective.

Article 35
Request for conversion of an international registration into a national 
trade mark application or into a designation of Member States

1.  A request for conversion of an international registration designating the 
Union into a national trade mark application or into a designation of Member 
States pursuant to Articles 139 and 202 of Regulation (EU) 2017/1001 shall, 
without prejudice to the requirements laid down in Article 202(4) to (7) of that 
Regulation, contain:

The EC Implementing and Delegated Regulations 279

(a) 

the registration number of the international registration;

(b) 
the date of the international registration or the date of the designation 
of the Union made subsequently to the international registration pursuant to 
Article 3ter(2) of the Madrid Protocol and, where applicable, particulars of the 
claim to priority for the international registration pursuant to Article 202(2) of 
Regulation (EU) 2017/1001, and particulars of the claim to seniority pursuant 
to Articles 39, 40 or 191 of Regulation (EU) 2017/1001;

the indications and elements referred to  in  Article 140(1)  of  Regulation 

(c) 
(EU) 2017/1001 and Article 22(a), (c) and (d) of this Regulation.

The publication of a request for conversion referred to in paragraph 1 shall 

2. 
contain the details laid down in Article 23.

Article 36
Transformation of an international registration designating the Union into 
an EU trade mark application

An application for transformation pursuant to Article 204(3) of Regulation (EU) 
2017/1001 shall contain, in addition to the indications and elements referred 
to in Article 2 of this Regulation, the following:

(a) 

the number of the international registration which has been cancelled;

the  date  on  which  the  international  registration  was  cancelled  by  the 

(b) 
International Bureau;

(c)  as appropriate, the date of the international registration pursuant to Arti-
cle 3(4) of the Madrid Protocol or the date of recordal of the territorial exten-
sion to the Union made subsequently to the international registration pursuant 
to Article 3ter(2) of the Madrid Protocol;

(d)  where applicable, the date of priority claimed in the international applica-
tion as entered in the international register kept by the International Bureau.

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Commission  implementing Regulation  (eu) 2018/626

TITLE XIV 
FINAL PROVISIONS

Article 37
Transitional measures

The provisions of Regulation (EC) No 2868/95 shall continue to apply to ongo-
ing  proceedings  where  this  Regulation  does  not  apply  in  accordance  with  its 
Article 39, until such proceedings are concluded.

Article 38
Repeal

Implementing Regulation (EU) 2017/1431 is repealed.

Article 39
Entry into force and application

This Regulation shall enter into force on the twentieth day following that 

1. 
of its publication in the Official Journal of the European Union.

It shall apply from the date of entry into force referred to in paragraph 1, 

2. 
subject to the following exceptions:

(a)  Title II shall not apply to applications for an EU trade mark entered before 
1 October 2017, as well as to international registrations for which the designa-
tion of the Union was made before that date;

(b)  Article 9 shall not apply to EU trade marks registered before 1 October 
2017;

(c)  Article 10 shall not apply to requests for alteration entered before 1 Octo-
ber 2017;

(d)  Article 11 shall not apply to declarations of division entered before 1 Octo-
ber 2017;

(e)  Article 12 shall not apply to requests for the change of name or address 
entered before 1 October 2017;

(f)  Title IV shall not apply to applications for registration of a transfer entered 
before 1 October 2017;

The EC Implementing and Delegated Regulations 281

(g)  Title V shall not apply to declarations of surrender entered before 1 Octo-
ber 2017;

(h)  Title VI shall not apply to applications for EU collective marks or EU cer-
tification  marks  entered  before  1  October  2017,  as  well  as  to  international 
registrations for which the designation of the Union was made before that date;

Title VII shall not apply to costs incurred in proceedings initiated before 1 

(i) 
October 2017;

(j) 

Title VIII shall not apply to publications made before 1 October 2017;

(k)  Title IX shall not apply to requests for information or inspection entered 
before 1 October 2017;

Title X shall not apply to requests for conversion entered before 1 October 

(l) 
2017;

(m)  Title XI shall not apply to supporting documents or translations entered 
before 1 October 2017;

(n)  Title XII shall not apply to decisions taken before 1 October 2017;

(o)  Title XIII shall not apply to international applications, notifications of facts 
and decisions on invalidity of the EU trade mark application or registration on 
which the international registration was based, requests for territorial exten-
sion,  seniority  claims,  notification  of  ex  officio  provisional  refusals,  notifica-
tions of invalidation of the effects of an international registration, requests for 
conversion for an international registration into a national trade mark applica-
tion and applications for transformation of an international registration desig-
nating the Union into an EU trade mark application entered or made before 1 
October 2017, as the case may be.

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

Done at Brussels, 5 March 2018.

For the Commission 
The President 
Jean-Claude JUNCKER

 
 
 
The TM Directive

The TM Directive 283

Directive (EU) 2015/2436  
of the European Parliament and of the Council

of 16 December 2015

to approximate the laws of the Member States  
relating to trade marks (Recast)

(Text with EEA relevance)

284

Directive (eU) 2015/2436  of the eUropean p arliament anD  of the coUncil

DIRECTIVE (EU) 2015/2436

TABLE OF CONTENTS (NOT PART OF THE OFFICIAL TEXT)

Scope 
Definitions 

CHAPTER 1 
GENERAL PROVISIONS 
Article 1 
Article 2 
CHAPTER 2 
SUBSTANTIVE LAW ON TRADE MARKS 
SECTION 1 
Signs of which a trade mark may consist 
Article 3 
SECTION 2 
Grounds for refusal or invalidity 
Article 4 
Article 5 
Article 6 

Signs of which a trade mark may consist 

Article 9 
SECTION 3 
Rights conferred and limitations 
Article 10 
Article 11 

Absolute grounds for refusal or invalidity 
Relative grounds for refusal or invalidity 
Establishment a posteriori of invalidity or revocation of a trade 
mark 
Grounds for refusal or invalidity relating to only some of the 
goods or services 
Lack of distinctive character or of reputation of an earlier trade 
mark precluding a declaration of invalidity of a registered trade 
mark 
Preclusion of a declaration of invalidity due to acquiescence 

Rights conferred by a trade mark 
The right to prohibit preparatory acts in relation to the use of 
packaging or other means 
Reproduction of trade marks in dictionaries 
Prohibition of the use of a trade mark registered in the name of 
an agent or representative 
Limitation of the effects of a trade mark 
Exhaustion of the rights conferred by a trade mark 
Use of trade marks 
Non-use as defence in infringement proceedings 
Intervening right of the proprietor of a later registered trade 
mark as defence in infringement proceedings 

Article 7 

Article 8 

Article 12 
Article 13 

Article 14 
Article 15 
Article 16 
Article 17 
Article 18 

296
296
296

297

297
297

297
297
299

302

302

302
303

303
303

305
305

306
306
307
307
308

308

The TM Directive 285

SECTION 4 
Revocation of trade mark rights 
Article 19 
Article 20 

309
309

309
310

310
310
310
310
311
311

Absence of genuine use as ground for revocation 
Trade mark having become generic or misleading indication as 
grounds for revocation 
Revocation relating to only some of the goods or services 

Transfer of registered trade marks 
Rights in rem 
Levy of execution 
Licensing 
Applications for a trade mark as an object of property 

312
312
Definitions 
312
Guarantee or certification marks 
313
Collective marks 
313
Regulations governing use of a collective mark 
314
Refusal of an application 
Use of collective marks 
314
Amendments to the regulations governing use of a collective mark 314
315
Persons entitled to bring an action for infringement 
315
Additional grounds for revocation 
315
Additional grounds for invalidity 

Article 21 
SECTION 5 
Trade marks as objects of property 
Article 22 
Article 23 
Article 24 
Article 25 
Article 26 
SECTION 6 
Guarantee or certification marks and collective marks 
Article 27 
Article 28 
Article 29 
Article 30 
Article 31 
Article 32 
Article 33 
Article 34 
Article 35 
Article 36 
CHAPTER 3 
PROCEDURES 
SECTION 1 
Application and registration 
Article 37 
Article 38 
Article 39 
Article 40 
Article 41 
Article 42 
SECTION 2 
Procedures for opposition, revocation and invalidity 
Opposition procedure 
Article 43 
Non-use as defence in opposition proceedings 
Article 44 
Procedure for revocation or declaration of invalidity 
Article 45 
Non-use as a defence in proceedings seeking a declaration of 
Article 46 
invalidity 
Consequences of revocation and invalidity 

Application requirements 
Date of filing 
Designation and classification of goods and services 
Observations by third parties 
Division of applications and registrations 
Class fees 

316

316
316
316
316
317
318
318

318
318
319
319

320
321

Article 47 

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Directive (eU) 2015/2436  of the eUropean p arliament anD  of the coUncil

Duration of registration 
Renewal 

SECTION 3 
Duration and renewal of registration 
Article 48 
Article 49 
SECTION 4 
Communication with the office 
Article 50 
CHAPTER 4 
ADMINISTRATIVE COOPERATION 
Article 51 

Communication with the office 

Article 52 
CHAPTER 5 
FINAL PROVISIONS 
Article 53 
Article 54 
Article 55 
Article 56 
Article 57 
ANNEX 
CORRELATION TABLE 

Data protection 
Transposition 
Repeal 
Entry into Force 
Addresses 

Cooperation in the area of trade mark registration and 
administration 
Cooperation in other areas 

322
322
322

323
323

323

323
323

323
323
324
324
324
325

326

The TM Directive 287

DIRECTIVE (EU) 2015/2436 OF THE EUROPEAN 
PARLIAMENT AND OF THE COUNCIL  
of 16 December 2015 
to approximate the laws of the Member States 
relating to trade marks (Recast)

(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 114(1) thereof, 

Having regard to the proposal from the European Commission,

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

Having regard to the opinion of the European Economic and Social Committee 
(23), 

Acting in accordance with the ordinary legislative procedure (24),

Whereas:

(1)  A  number  of  amendments  should  be  made  to  Directive  2008/95/EC  of 
the European Parliament and of the Council (25). In the interests of clarity, that 
Directive should be recast.

(2)  Directive  2008/95/EC  has  harmonised  central  provisions  of  substantive 
trade mark law which at the time of adoption were considered as most directly 
affecting the functioning of the internal market by impeding the free move-
ment of goods and the freedom to provide services in the Union.

(23) OJ3 C 327, 12.11.2013, p. 42.

(24) Position of the European Parliament of 25 February 2014 (not yet published in the Official Journal) 
and position of the Council at first reading of 10 November 2015 (not yet published in the Official 
Journal). Position of the European Parliament of 15 December 2015.

(25) Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approxi-

mate the laws of the Member States relating to trade marks (OJ L 299, 8.11.2008, p. 25).

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Directive  (eU) 2015/2436 of  the  eUropean  parliament  anD of  the  coUncil

(3)  Trade  mark  protection  in  the  Member  States  coexists  with  protection 
available at Union level through European Union trade marks (‘EU trade marks’) 
which are unitary in character and valid throughout the Union as laid down in 
Council Regulation (EC) No 207/2009 (26). The coexistence and balance of trade 
mark systems at national and Union level in fact constitutes a cornerstone of 
the Union’s approach to intellectual property protection.

(4)  Further to the Commission’s communication of 16 July 2008 on an indus-
trial property rights strategy for Europe, the Commission carried out a com-
prehensive evaluation of the overall functioning of the trade mark system in 
Europe  as  a  whole,  covering  Union  and  national  levels  and  the  interrelation 
between the two.

(5) 
In its conclusions of 25 May 2010 on the future revision of the trade mark 
system in the European Union, the Council called on the Commission to pre-
sent proposals for the revision of Regulation (EC) No 207/2009 and Directive 
2008/95/EC. The revision of that Directive should include measures to make it 
more consistent with Regulation (EC) No 207/2009, which would thus reduce 
the areas of divergence within the trade mark system in Europe as a whole, 
while  maintaining  national  trade  mark  protection  as  an  attractive  option  for 
applicants.  In  this  context,  the  complementary  relationship  between  the  EU 
trade mark system and national trade mark systems should be ensured.

(6)  The Commission concluded in its communication of 24 May 2011 entitled 
‘A single market for intellectual property rights’ that in order to meet increased 
demands from stakeholders for faster, higher quality, more streamlined trade 
mark registration systems, which are also more consistent, user friendly, pub-
licly accessible and technologically up to date, there is a necessity to modernise 
the trade mark system in the Union as a whole and adapt it to the internet era.

(7)  Consultation and evaluation for the purpose of this Directive has revealed 
that,  in  spite  of  the  previous  partial  harmonisation  of  national  laws,  there 
remain  areas  where  further  harmonisation  could  have  a  positive  impact  on 
competitiveness and growth.

(8) 
In order to serve the objective of fostering and creating a well-functioning 
internal market and to facilitate acquiring and protecting trade marks in the 
Union, to the benefit of the growth and the competitiveness of European busi-
nesses,  in  particular  small  and  medium-sized  enterprises,  it  is  necessary  to 
go beyond the limited scope of approximation achieved by Directive 2008/95/
EC and extend approximation to other aspects of substantive trade mark law 

(26) Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ L 78, 

24.3.2009, p. 1).

The TM Directive 289

governing trade marks protected through registration pursuant to Regulation 
(EC) No 207/2009.

(9)  For the purpose of making trade mark registrations throughout the Union 
easier to obtain and administer, it is essential to approximate not only provi-
sions of substantive law but also procedural rules. Therefore, the principal pro-
cedural rules in the area of trade mark registration in the Member States and 
in the EU trade mark system should be aligned. As regards procedures under 
national law, it is sufficient to lay down general principles, leaving the Member 
States free to establish more specific rules.

(10)  It is essential to ensure that registered trade marks enjoy the same pro-
tection under the legal systems of all the Member States. In line with the exten-
sive protection granted to EU trade marks which have a reputation in the Union, 
extensive protection should also be granted at national level to all registered 
trade marks which have a reputation in the Member State concerned.

(11)  This Directive should not deprive the Member States of the right to con-
tinue to protect trade marks acquired through use but should take them into 
account  only  with  regard  to  their  relationship  with  trade  marks  acquired  by 
registration.

(12)  Attainment of the objectives of this approximation of laws requires that 
the conditions for obtaining and continuing to hold a registered trade mark be, 
in general, identical in all Member States.

(13)  To this end, it is necessary to list examples of signs which are capable of 
constituting a trade mark, provided that such signs are capable of distinguish-
ing the goods or services of one undertaking from those of other undertakings. 
In  order  to  fulfil  the  objectives  of  the  registration  system  for  trade  marks, 
namely to ensure legal certainty and sound administration, it is also essential 
to require that the sign is capable of being represented in a manner which is 
clear, precise, self-contained, easily accessible, intelligible, durable and objec-
tive. A sign should therefore be permitted to be represented in any appropriate 
form using generally available technology, and thus not necessarily by graphic 
means,  as  long  as  the  representation  offers  satisfactory  guarantees  to  that 
effect.

(14)  Furthermore,  the  grounds  for  refusal  or  invalidity  concerning  the  trade 
mark  itself,  including  the  absence  of  any  distinctive  character,  or  concerning 
conflicts  between  the  trade  mark  and  earlier  rights,  should  be  listed  in  an 
exhaustive manner, even if some of those grounds are listed as an option for 
the  Member  States  which  should  therefore  be  able  to  maintain  or  introduce 
them in their legislation.

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Directive  (eU) 2015/2436 of  the  eUropean  parliament  anD of  the  coUncil

(15)  In order to ensure that the levels of protection afforded to geographical 
indications by Union legislation and national law are applied in a uniform and 
exhaustive  manner  in  the  examination  of  absolute  and  relative  grounds  for 
refusal  throughout  the  Union,  this  Directive  should  include  the  same  provi-
sions in relation to geographical indications as contained in Regulation (EC) No 
207/2009. Furthermore, it is appropriate to ensure that the scope of absolute 
grounds is extended to also cover protected traditional terms for wine and tra-
ditional specialties guaranteed.

(16)  The  protection  afforded  by  the  registered  trade  mark,  the  function  of 
which is in particular to guarantee the trade mark as an indication of origin, 
should be absolute in the event of there being identity between the mark and 
the corresponding sign and the goods or services. The protection should apply 
also in the case of similarity between the mark and the sign and the goods or 
services. It is indispensable to give an interpretation of the concept of similar-
ity  in  relation  to  the  likelihood  of  confusion.  The  likelihood  of  confusion,  the 
appreciation  of  which  depends  on  numerous  elements  and,  in  particular,  on 
the recognition of the trade mark on the market, the association which can be 
made with the used or registered  sign,  the degree  of  similarity between  the 
trade mark and the sign and between the goods or services identified, should 
constitute the specific condition for such protection. The ways in which a likeli-
hood of confusion can be established, and in particular the onus of proof in that 
regard, should be a matter for national procedural rules which should not be 
prejudiced by this Directive.

(17)  In order to ensure legal certainty and full consistency with the principle 
of priority, under which a registered earlier trade mark takes precedence over 
later registered trade marks, it is necessary to provide that the enforcement 
of rights which are conferred by a trade mark should be without prejudice to 
the rights of proprietors acquired prior to the filing or priority date of the trade 
mark. Such an approach is in conformity with Article 16(1) of the Agreement on 
trade-related aspects of intellectual property rights of 15 April 1994 (‘TRIPS 
Agreement’).

(18)  It is appropriate to provide that an infringement of a trade mark can only 
be established if there is a finding that the infringing mark or sign is used in 
the course of trade for the purposes of distinguishing goods or services. Use of 
the sign for purposes other than for distinguishing goods or services should be 
subject to the provisions of national law.

(19)  The concept of infringement of a trade mark should also comprise the use 
of the sign as a trade name or similar designation, as long as such use is made 
for the purposes of distinguishing goods or services.

The TM Directive 291

(20)  In order to ensure legal certainty and full consistency with specific Union 
legislation, it is appropriate to provide that the proprietor of a trade mark should 
be entitled to prohibit a third party from using a sign in comparative advertising 
where  such  comparative  advertising  is  contrary  to  Directive  2006/114/EC  of 
the European Parliament and of the Council (27).

(21)  In order to strengthen trade mark protection and combat counterfeiting 
more effectively, and in line with inter national obligations of the Member States 
under the World Trade Organisation (WTO) framework, in particular Article V of 
the  General  Agreement  on  Tariffs  and  Trade  on  freedom  of  transit  and,  as 
regards generic medicines, the ‘Declaration on the TRIPS Agreement and pub-
lic health’ adopted by the Doha WTO Ministerial Conference on 14 November 
2001, the proprietor of a trade mark should be entitled to prevent third parties 
from bringing goods, in the course of trade, into the Member State where the 
trade mark is registered without being released for free circulation there, where 
such goods come from third countries and bear without authorisation a trade 
mark which is identical or essentially identical with the trade mark registered in 
respect of such goods.

(22)  To this effect, it should be permissible for trade mark proprietors to pre-
vent the entry of infringing goods and their placement in all customs situations, 
including, in particular transit, transhipment, warehousing, free zones, tempo-
rary storage, inward processing or temporary admission, also when such goods 
are not intended to be placed on the market of the Member State concerned. In 
performing customs controls, the customs authorities should make use of the 
powers and procedures laid down in Regulation (EU) No 608/2013 of the Euro-
pean Parliament and of the Council (28), also at the request of the right holders. 
In particular, the customs authorities should carry out the relevant controls on 
the basis of risk analysis criteria.

(23)  In order to reconcile the need to ensure the effective enforcement of trade 
mark  rights  with  the  necessity  to  avoid  hampering  the  free  flow  of  trade  in 
legitimate goods, the entitlement of the proprietor of the trade mark should 
lapse  where,  during  the  subsequent  proceedings  initiated  before  the  judicial 
or  other  authority  competent  to  take  a  substantive  decision  on  whether  the 
registered trade mark has been infringed, the declarant or the holder of the 

(27) Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 con-

cerning misleading and comparative advertising (OJ L 376, 27.12.2006, p. 21).

(28) Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 con-
cerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) 
No 1383/2003 (OJ L 181, 29.6.2013, p. 15).

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goods is able to prove that the proprietor of the registered trade mark is not 
entitled to prohibit the placing of the goods on the market in the country of 
final destination.

(24)  Article 28 of Regulation (EU) No 608/2013 provides that a right holder is 
to be liable for damages towards the holder of the goods where, inter alia, the 
goods in question are subsequently found not to infringe an intellectual prop-
erty right.

(25)  Appropriate measures should be taken with a view to ensuring the smooth 
transit  of  generic  medicines.  With  respect  to  international  non-proprietary 
names  (INN)  as  globally  recognised  generic  names  for  active  substances  in 
pharmaceutical  preparations,  it  is  vital  to  take  due  account  of  the  existing 
limitations on the effect of trade mark rights. Consequently, the proprietor of 
a trade mark should not have the right to prevent a third party from bringing 
goods into a Member State where the trade mark is registered without being 
released for free circulation there based upon similarities between the INN for 
the active ingredient in the medicines and the trade mark.

(26)  In order to enable proprietors of registered trade marks to combat coun-
terfeiting more effectively, they should be entitled to prohibit the affixing of an 
infringing trade mark to goods, and certain preparatory acts carried out prior 
to such affixing.

(27)  The exclusive rights conferred by a trade mark should not entitle the pro-
prietor  to  prohibit  the  use  of  signs  or  indications  by  third  parties  which  are 
used fairly and thus in accordance with honest practices in industrial and com-
mercial matters. In order to create equal conditions for trade names and trade 
marks against the background that trade names are regularly granted unre-
stricted protection against later trade marks, such use should only be consid-
ered to include the use of the personal name of the third party. Such use should 
further permit the use of descriptive or non-distinctive signs or indications in 
general. Furthermore, the proprietor should not be entitled to prevent the fair 
and honest use of the mark for the purpose of identifying or referring to the 
goods or services as those of the proprietor. Use of a trade mark by third par-
ties to draw the consumer`s attention to the resale of genuine goods that were 
originally sold by, or with the consent of, the proprietor of the trade mark in the 
Union should be considered as being fair as long as it is at the same time in 
accordance with honest practices in industrial and commercial matters. Use of 
a trade mark by third parties for the purpose of artistic expression should be 
considered as being fair as long as it is at the same time in accordance with 
honest practices in industrial and commercial matters. Furthermore, this Direc-
tive should be applied in a way that ensures full respect for fundamental rights 
and freedoms, and in particular the freedom of expression.

The TM Directive 293

(28)  It follows from the principle of free movement of goods that the proprietor 
of a trade mark should not be entitled to prohibit its use by a third party in rela-
tion to goods which have been put into circulation in the Union, under the trade 
mark, by him or with his consent, unless the proprietor has legitimate reasons 
to oppose further commercialisation of the goods.

(29)  It is important, for reasons of legal certainty to provide that, without prej-
udice to his interests as a proprietor of an earlier trade mark, the latter may 
no longer request a declaration of invalidity or oppose the use of a trade mark 
subsequent to his own trade mark, of which he has knowingly tolerated the use 
for a substantial length of time, unless the application for the subsequent trade 
mark was made in bad faith.

(30) In  order  to  ensure  legal  certainty  and  safeguard  legitimately  acquired 
trade mark rights, it is appropriate and necessary to provide that, without prej-
udice to the principle that the later trade mark cannot be enforced against the 
earlier trade mark, proprietors of earlier trade marks should not be entitled to 
obtain refusal or invalidation or to oppose the use of a later trade mark if the 
later trade mark was acquired at a time when the earlier trade mark was liable 
to be declared invalid or revoked, for example because it had not yet acquired 
distinctiveness through use, or if the earlier trade mark could not be enforced 
against the later trade mark because the necessary conditions were not appli-
cable, for example when the earlier mark had not yet obtained a reputation.

(31)  Trade marks fulfil their purpose of distinguishing goods or services and 
allowing  consumers  to  make  informed  choices  only  when  they  are  actually 
used on the market. A requirement of use is also necessary in order to reduce 
the  total  number  of  trade  marks  registered  and  protected  in  the  Union  and, 
consequently, the number of conflicts which arise between them. It is therefore 
essential to require that registered trade marks actually be used in connection 
with the goods or services for which they are registered, or, if not used in that 
connection within five years of the date of the completion of the registration 
procedure, be liable to be revoked.

(32)  Consequently, a registered trade mark should only be protected in so far 
as it is actually used and a registered earlier trade mark should not enable its 
proprietor to oppose or invalidate a later trade mark if that proprietor has not 
put his trade mark to genuine use. Furthermore, Member States should provide 
that a trade mark may not be successfully invoked in infringement proceedings 
if it is established, as a result of a plea, that the trade mark could be revoked 
or, when the action is brought against a later right, could have been revoked at 
the time when the later right was acquired.

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(33)  It is appropriate to provide that, where the seniority of a national mark or 
a trade mark registered under international arrangements having effect in the 
Member State has been claimed for an EU trade mark and the mark providing 
the basis for the seniority claim has thereafter been surrendered or allowed to 
lapse, the validity of that mark can still be challenged. Such a challenge should 
be  limited  to  situations  where  the  mark  could  have  been  declared  invalid  or 
revoked at the time it was removed from the register.

(34) For reasons of coherence and in order to facilitate the commercial exploi-
tation  of  trade  marks  in  the  Union,  the  rules  applicable  to  trade  marks  as 
objects  of  property  should  be  aligned  to  the  extent  appropriate  with  those 
already in place for EU trade marks, and should include rules on assignment 
and transfer, licensing, rights in rem and levy of execution.

(35)  Collective  trade  marks  have  proven  a  useful  instrument  for  promoting 
goods or services with specific common properties. It is therefore appropriate 
to subject national collective trade marks to rules similar to the rules applicable 
to European Union collective marks.

(36) In order to improve and facilitate access to trade mark protection and to 
increase  legal  certainty  and  predictability,  the  procedure  for  the  registration 
of trade marks in the Member States should be efficient and transparent and 
should follow rules similar to those applicable to EU trade marks.

(37) In order to ensure legal certainty with regard to the scope of trade mark 
rights  and  to  facilitate  access  to  trade  mark  protection,  the  designation  and 
classification of goods and services covered by a trade mark application should 
follow  the  same  rules  in  all  Member  States  and  should  be  aligned  to  those 
applicable  to  EU  trade  marks.  In  order  to  enable  the  competent  authorities 
and  economic  operators  to  determine  the  extent  of  the  trade  mark  protec-
tion  sought  on  the  basis  of  the  application  alone,  the  designation  of  goods 
and services should be sufficiently clear and precise. The use of general terms 
should be interpreted as including only goods and services clearly covered by 
the literal meaning of a term. In the interest of clarity and legal certainty, the 
Member States’ central industrial property offices and the Benelux Office for 
Intellectual Property should, in cooperation with each other, endeavour to com-
pile a list reflecting their respective administrative practices with regard to the 
classification of goods and services.

(38)  For the purpose of ensuring effective trade mark protection, Member States 
should make available an efficient administrative opposition procedure, allowing 
at least the proprietor of earlier trade mark rights and any person authorised 
under the relevant law to exercise the rights arising from a protected designation 
of origin or a geographical indication to oppose the registration of a trade mark 

The TM Directive 295

application.  Furthermore,  in  order  to  offer  efficient  means  of  revoking  trade-
marks or declaring them invalid, Member States should provide for an admin-
istrative procedure for revocation or declaration of invalidity within the longer 
transposition period of seven years, after the entry into force of this Directive.

(39)  It is desirable that Member States’ central industrial property offices and 
the Benelux Office for Intellectual Property cooperate with each other and with 
the European Union Intellectual Property Office in all fields of trade mark reg-
istration and administration in order to promote convergence of practices and 
tools, such as the creation and updating of common or connected databases 
and portals for consultation and search purposes. The Member States should 
further ensure that their offices cooperate with each other and with the Euro-
pean  Union  Intellectual  Property  Office  in  all  other  areas  of  their  activities 
which are relevant for the protection of trade marks in the Union.

(40)  This Directive should not exclude the application to trade marks of provi-
sions of law of the Member States other than trade mark law, such as provi-
sions relating to unfair competition, civil liability or consumer protection.

(41)  Member States are bound by the Paris Convention for the Protection of 
Industrial Property (‘the Paris Convention’) and the TRIPS Agreement. It is nec-
essary that this Directive be entirely consistent with that Convention and that 
Agreement. The obligations of the Member States resulting from that Conven-
tion and that Agreement should not be affected by this Directive. Where appro-
priate, the second paragraph of Article 351 of the Treaty on the Functioning of 
the European Union should apply.

(42)  Since the objectives of this Directive, namely to foster and create a well-
functioning  internal  market  and  to  facilitate  the  registration,  administration 
and protection of trade marks in the Union to the benefit of growth and com-
petitiveness,  cannot  be  sufficiently  achieved  by  the  Member  States  but  can 
rather,  by  reason  of  its  scale  and  effects,  be  better  achieved  at  Union  level, 
the Union may adopt measures, in accordance with the principle of subsidiarity 
as set out in Article 5 of the Treaty on European Union. In accordance with the 
principle of proportionality as set out in that Article, this Directive does not go 
beyond what is necessary in order to achieve those objectives.

(43)  Directive 95/46/EC of the European Parliament and of the Council (29) gov-
erns the processing of personal data carried out in the Member States in the 
context of this Directive.

(29) Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protec-
tion of individuals with regard to the processing of personal data and on the free movement of such 
data (OJ L 281, 23.11.1995, p. 31).

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(44) The  European  Data  Protection  Supervisor  was  consulted  in  accordance 
with Article 28(2) of Regulation (EC) No 45/2001 of the European Parliament 
and of the Council (30) and delivered an opinion on 11 July 2013.

(45)  The  obligation  to  transpose  this  Directive  into  national  law  should  be 
confined  to  those  provisions  which  represent  a  substantive  amendment  as 
compared with the earlier Directive. The obligation to transpose the provisions 
which are unchanged arises under the earlier Directive.

(46) This Directive should be without prejudice to the obligations of the Mem-
ber States under Directive 2008/95/EC relating to the time limit for transposi-
tion of Council Directive 89/104/EEC (31) into national law as set out in Part B of 
Annex I to Directive 2008/95/EC,

HAVE ADOPTED THIS DIRECTIVE:

CHAPTER 1 
GENERAL PROVISIONS

Article 1
Scope

This Directive applies to every trade mark in respect of goods or services which 
is the subject of registration or of an application for registration in a Member 
State as an individual trade mark, a guarantee or certification mark or a col-
lective mark, or which is the subject of a registration or an application for reg-
istration in the Benelux Office for Intellectual Property or of an international 
registration having effect in a Member State.

Article 2
Definitions

For the purpose of this Directive, the following definitions apply:

(a) 
‘office’ means the central industrial property office of the Member State 
or the Benelux Office for Intellectual Property, entrusted with the registration 
of trade marks;

(30) Regulation (EC) No 45/2001 of the European Parliament and of the Council of 18 December 2000 
on the protection of individuals with regard to the processing of personal data by the Community 
institutions and bodies and on the free movement of such data (OJ L 8, 12.1.2001, p. 1).

(31) First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member 

States relating to trade marks (OJ L 40, 11.2.1989, p. 1).

The TM Directive 297

(b) 

‘register’ means the register of trade marks kept by an office.

CHAPTER 2 
SUBSTANTIVE LAW ON TRADE MARKS

SECTION 1 
Signs of which a trade mark may consist

Article 3
Signs of which a trade mark may consist

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

EUTMR 
Art. 4 

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

(b)  being represented on the register in a manner which enables the compe-
tent authorities and the public to determine the clear and precise subject mat-
ter of the protection afforded to its proprietor.

SECTION 2 
Grounds for refusal or invalidity

Article 4
Absolute grounds for refusal or invalidity

The following shall not be registered or, if registered, shall be liable to be 

1. 
declared invalid:

EUTMR 
Art. 7, 59, 
137 

(a)  signs which cannot constitute a trade mark;

(b) 

trade marks which are devoid of any distinctive character;

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

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

(e)  signs which consist exclusively of:

(i) 

the shape, or another characteristic, which results from the nature of 
the goods themselves;

(ii) 

the shape, or another characteristic, of goods which is necessary to 
obtain a technical result;

(iii)  the shape, or another characteristic, which gives substantial value to 

the goods;

trade marks which are contrary to public policy or to accepted principles 

(f) 
of morality;

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

(h) 
trade marks which have not been authorised by the competent authori-
ties and are to be refused or invalidated pursuant to Article 6ter of the Paris 
Convention;

(i) 
trade marks which are excluded from registration pursuant to Union leg-
islation or the national law of the Member State concerned, or to international 
agreements to which the Union or the Member State concerned is party, provid-
ing for protection of designations of origin and geographical indications;

(j) 
trade marks which are excluded from registration pursuant to Union leg-
islation or international agreements to which the Union is party, providing for 
protection of traditional terms for wine;

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

(l) 
trade marks which consist of, or reproduce in their essential elements, an 
earlier plant variety denomination registered in accordance with Union legisla-
tion or the national law of the Member State concerned, or international agree-
ments to which the Union or the Member State concerned is party, providing 
protection for plant variety rights, and which are in respect of plant varieties of 
the same or closely related species.

The TM Directive 299

2.  A trade mark shall be liable to be declared invalid where the application 
for registration of the trade mark was made in bad faith by the applicant. Any 
Member State may also provide that such a trade mark is not to be registered.

3.  Any Member State may provide that a trade mark is not to be registered 
or, if registered, is liable to be declared invalid where and to the extent that:

the use of that trade mark may be prohibited pursuant to provisions of law 

(a) 
other than trade mark law of the Member State concerned or of the Union;

the trade mark includes a sign of high symbolic value, in particular a reli-

(b) 
gious symbol;

(c) 
the  trade  mark  includes  badges,  emblems  and  escutcheons  other  than 
those covered by Article 6ter of the Paris Convention and which are of public 
interest, unless the consent of the competent authority to their registration has 
been given in conformity with the law of the Member State.

4.  A trade mark shall not be refused registration in accordance with para-
graph 1(b), (c) or (d) if, before the date of application for registration, follow-
ing the use which has been made of it, it has acquired a distinctive character. 
A trade mark shall not be declared invalid for the same reasons if, before the 
date of application for a declaration of invalidity, following the use which has 
been made of it, it has acquired a distinctive character.

5.  Any Member State may provide that paragraph 4 is also to apply where 
the distinctive character was acquired after the date of application for registra-
tion but before the date of registration.

Article 5
Relative grounds for refusal or invalidity

1.  A trade mark shall not be registered or, if registered, shall be liable to be 
declared invalid where:

EUTMR 
Art. 8, 46, 
60 

(a) 
it  is  identical  with  an  earlier  trade  mark,  and  the  goods  or  services  for 
which the trade mark is applied for or is registered are identical with the goods 
or services for which the earlier trade mark is protected;

(b)  because  of  its  identity  with,  or  similarity  to,  the  earlier  trade  mark  and 
the identity or similarity of the goods or services covered by the trade marks, 
there exists a likelihood of confusion on the part of the public; the likelihood of 
confusion includes the likelihood of association with the earlier trade mark.

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2. 

‘Earlier trade marks’ within the meaning of paragraph 1 means:

(a) 
trade marks of the following kinds with a date of application for registra-
tion which is earlier than the date of application for registration of the trade 
mark, taking account, where appropriate, of the priorities claimed in respect of 
those trade marks:

(i) 

EU trade marks;

(ii) 

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

(iii)  trade marks registered under international arrangements which have 

effect in the Member State concerned;

(b)  EU trade marks which validly claim seniority, in accordance with Regula-
tion (EC) No 207/2009, of a trade mark referred to in points (a)(ii) and (iii), even 
when the latter trade mark has been surrendered or allowed to lapse;

(c)  applications for the trade marks referred to in points (a) and (b), subject to 
their registration;

trade marks which, on the date of application for registration of the trade 
(d) 
mark, or, where appropriate, of the priority claimed in respect of the applica-
tion  for  registration  of  the  trade  mark,  are  well  known  in  the  Member  State 
concerned, in the sense in which the words ‘well-known’ are used in Article 6bis 
of the Paris Convention.

Furthermore, a trade mark shall not be registered or, if registered, shall be 

3. 
liable to be declared invalid where:

it  is  identical  with,  or  similar  to,  an  earlier  trade  mark  irrespective  of 
(a) 
whether the goods or services for which it is applied or registered are identical 
with, similar to or not similar to those for which the earlier trade mark is reg-
istered, where the earlier trade mark has a reputation in the Member State in 
respect of which registration is applied for or in which the trade mark is regis-
tered or, in the case of an EU trade mark, has a reputation in the Union and the 
use of the later trade mark without due cause would take unfair advantage of, 
or be detrimental to, the distinctive character or the repute of the earlier trade 
mark;

The TM Directive 301

(b)  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;

(c)  and  to  the  extent  that,  pursuant  to  Union  legislation  or  the  law  of  the 
Member State concerned providing for protection of designations of origin and 
geographical indications:

(i) 

(ii) 

an application for a designation of origin or a geographical indication 
had already been submitted in accordance with Union legislation or 
the law of the Member State concerned prior to the date of appli-
cation for registration of the trade mark or the date of the priority 
claimed for the application, subject to its subsequent registration;

that designation of origin or geographical indication confers on the 
person authorised under the relevant law to exercise the rights aris-
ing  therefrom  the  right  to  prohibit  the  use  of  a  subsequent  trade 
mark.

4.  Any Member State may provide that a trade mark is not to be registered 
or, if registered, is liable to be declared invalid where, and to the extent that:

(a) 
rights to a non-registered trade mark or to another sign used in the course 
of trade were acquired prior to the date of application for registration of the 
subsequent trade mark, or the date of the priority claimed for the application 
for registration of the subsequent trade mark, and that non-registered trade 
mark  or  other  sign  confers  on  its  proprietor  the  right  to  prohibit  the  use  of 
a subsequent trade mark;

(b) 
the use of the trade mark may be prohibited by virtue of an earlier right, 
other than the rights referred to in paragraph 2 and point (a) of this paragraph, 
and in particular:

(i) 

a right to a name;

(ii)  a right of personal portrayal;

(iii)  a copyright;

(iv)  an industrial property right;

the  trade  mark  is  liable  to  be  confused  with  an  earlier  trade  mark  pro-
(c) 
tected abroad, provided that, at the date of the application, the applicant was 
acting in bad faith.

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5. 
The Member States shall ensure that in appropriate circumstances there 
is no obligation to refuse registration or to declare a trade mark invalid where 
the proprietor of the earlier trade mark or other earlier right consents to the 
registration of the later trade mark.

6.  Any  Member  State  may  provide  that,  by  way  of  derogation  from  para-
graphs 1 to 5, the grounds for refusal of registration or invalidity in force in 
that Member State prior to the date of the entry into force of the provisions 
necessary to comply with Directive 89/104/EEC are to apply to trade marks for 
which an application has been made prior to that date.

Article 6
Establishment a posteriori of invalidity or revocation of a trade mark

EUTMR 
Art. 39 

Where  the  seniority  of  a  national  trade  mark  or  of  a  trade  mark  registered 
under  international  arrangements  having  effect  in  the  Member  State,  which 
has been surrendered or allowed to lapse, is claimed for an EU trade mark, the 
invalidity or revocation of the trade mark providing the basis for the seniority 
claim may be established a posteriori, provided that the invalidity or revocation 
could have been declared at the time the mark was surrendered or allowed to 
lapse. In such a case, the seniority shall cease to produce its effects.

Article 7
Grounds for refusal or invalidity relating to only some of the goods or 
services

EUTMR 
Art. 42, 47, 
59, 60, 64 

Where grounds for refusal of registration or for invalidity of a trade mark exist 
in respect of only some of the goods or services for which that trade mark has 
been applied or registered, refusal of registration or invalidity shall cover those 
goods or services only.

Article 8
Lack of distinctive character or of reputation of an earlier trade mark 
precluding a declaration of invalidity of a registered trade mark

EUTMR 
Art. 7, 8, 
59, 60 

An application for a declaration of invalidity on the basis of an earlier trade 
mark shall not succeed at the date of application for invalidation if it would not 
have been successful at the filing date or the priority date of the later trade 
mark for any of the following reasons:

(a) 
the earlier trade mark, liable to be declared invalid pursuant to Article 4(1)
(b), (c) or (d), had not yet acquired a distinctive character as referred to in Article 
4(4);

The TM Directive 303

(b) 
the  application  for  a  declaration  of  invalidity  is  based  on  Article  5(1)(b) 
and the earlier trade mark had not yet become sufficiently distinctive to sup-
port a finding of likelihood of confusion within the meaning of Article 5(1)(b);

(c) 
the application for a declaration of invalidity is based on Article 5(3)(a) 
and the earlier trade mark had not yet acquired a reputation within the mean-
ing of Article 5(3)(a).

Article 9
Preclusion of a declaration of invalidity due to acquiescence

1.  Where,  in  a  Member  State,  the  proprietor  of  an  earlier  trade  mark  as 
referred to in Article 5(2) or Article 5(3)(a) has acquiesced, for a period of five 
successive years, in the use of a later trade mark registered in that Member 
State while being aware of such use, that proprietor shall no longer be entitled 
on the basis of the earlier trade mark to apply for a declaration that the later 
trade  mark  is  invalid  in  respect  of  the  goods  or  services  for  which  the  later 
trade  mark  has  been  used,  unless  registration  of  the  later  trade  mark  was 
applied for in bad faith.

EUTMR 
Art. 61 

2.  Member States may provide that paragraph 1 of this Article is to apply to 
the proprietor of any other earlier right referred to in Article 5(4)(a) or (b).

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

SECTION 3 
Rights conferred and limitations

Article 10
Rights conferred by a trade mark

The registration of a trade mark shall confer on the proprietor exclusive 

1. 
rights therein.

EUTMR 
Art. 9 

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

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the sign is identical with the trade mark and is used in relation to goods or 

(a) 
services which are identical with those for which the trade mark is registered;

(b) 
the sign is identical with, or similar to, the trade mark and is used in rela-
tion to goods or services which are identical with, or similar to, the goods or 
services for which the 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;

(c) 
the  sign  is  identical  with,  or  similar  to,  the  trade  mark  irrespective  of 
whether it is used in relation to goods or services which are identical with, simi-
lar to, or not similar to, those for which the trade mark is registered, where the 
latter has a reputation in the Member State and where use of that sign without 
due cause takes unfair advantage of, or is detrimental to, the distinctive char-
acter or the repute of the 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 or putting them on the market, or stocking them for 
those purposes, under the sign, or offering or supplying services thereunder;

(c) 

importing or exporting the goods under the 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;

(f)  using the sign in comparative advertising in a manner that is contrary to 
Directive 2006/114/EC.

4.  Without  prejudice  to  the  rights  of  proprietors  acquired  before  the  filing 
date  or  the  priority date of  the registered  trade mark, the  proprietor of  that 
registered  trade mark shall also  be entitled  to prevent all third parties  from 
bringing goods, in the course of trade, into the Member State where the trade 
mark is registered, without being released for free circulation there, where such 
goods,  including  the  packaging  thereof,  come  from  third  countries  and  bear 
without authorisation a trade mark which is identical with the trade mark regis-
tered in respect of such goods, or which cannot be distinguished in its essential 
aspects from that trade mark.

The TM Directive 305

The  entitlement  of  the  trade  mark  proprietor  pursuant  to  the  first  subpara-
graph  shall  lapse  if,  during  the  proceedings  to  determine  whether  the  regis-
tered trade mark has been infringed, initiated in accordance with Regulation 
(EU) No 608/2013, evidence is provided by the declarant or the holder of the 
goods that the proprietor of the registered trade mark is not entitled to prohibit 
the placing of the goods on the market in the country of final destination.

5.  Where, under the law of a Member State, the use of a sign under the con-
ditions referred to in paragraph 2 (b) or (c) could not be prohibited before the 
date of entry into force of the provisions necessary to comply with Directive 
89/104/EEC in the Member State concerned, the rights conferred by the trade 
mark may not be relied on to prevent the continued use of the sign.

6. 
Paragraphs 1, 2, 3 and 5 shall not affect provisions in any Member State 
relating to the protection against the use of a sign other than use for the pur-
poses of distinguishing goods or services, where use of that sign without due 
cause takes unfair advantage of, or is detrimental to, the distinctive character 
or the repute of the trade mark.

Article 11
The right to prohibit preparatory acts in relation to the use of packaging 
or other means

Where the risk exists that the packaging, labels, tags, security or authenticity 
features  or  devices,  or  any  other  means  to  which  the  trade  mark  is  affixed, 
could be used in relation to goods or services and that use would constitute an 
infringement of the rights of the proprietor of a trade mark under Article 10(2) 
and (3), the proprietor of that trade mark shall have the right to prohibit the 
following acts if carried out in the course of trade:

EUTMR 
Art. 10 

(a)  affixing a sign identical with, or similar to, the trade mark on packaging, 
labels, tags, security or authenticity features or devices, or any other means to 
which the mark may be affixed;

(b)  offering  or  placing  on  the  market,  or  stocking  for  those  purposes,  or 
importing  or  exporting,  packaging,  labels,  tags,  security  or  authenticity  fea-
tures or devices, or any other means to which the mark is affixed.

Article 12
Reproduction of trade marks in dictionaries

If the reproduction of a trade mark in a dictionary, encyclopaedia or similar ref-
erence work, in print or electronic form, gives the impression that it constitutes 
the generic name of the goods or services for which the trade mark is regis-
tered, the publisher of the work shall, at the request of the proprietor of the 

EUTMR 
Art. 12 

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trade mark, ensure that the reproduction of the trade mark is, without delay, 
and in the case of works in printed form at the latest in the next edition of the 
publication, accompanied by an indication that it is a registered trade mark.

Article 13
Prohibition of the use of a trade mark registered in the name of an agent 
or representative

EUTMR 
Art. 8, 13, 
21 

1.  Where a trade mark is registered in the name of the agent or representa-
tive of a person who is the proprietor of that trade mark, without the proprie-
tor’s consent, the latter shall be entitled to do either or both of the following:

(a)  oppose the use of the trade mark by his agent or representative;

(b)  demand the assignment of the trade mark in his favour.

Paragraph 1 shall not apply where the agent or representative justifies his 

2. 
action.

Article 14
Limitation of the effects of a trade mark

EUTMR 
Art. 14, 
138 

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

the name or address of the third party, where that third party is a natural 

(a) 
person;

(b)  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 
goods or services;

(c) 
the trade mark for the purpose of identifying or referring to goods or ser-
vices as those of the proprietor of that 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.

Paragraph 1 shall only apply where the use made by the third party is in 

2. 
accordance with honest practices in industrial or commercial matters.

3.  A trade mark shall not entitle the proprietor to prohibit a third party from 
using, in the course of trade, an earlier right which only applies in a particular 
locality,  if  that  right  is  recognised  by  the  law  of  the  Member  State  in  ques-

The TM Directive 307

tion and the use of that right is within the limits of the territory in which it is 
recognised.

Article 15
Exhaustion of the rights conferred by a trade mark

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

EUTMR 
Art. 15 

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

Article 16
Use of trade marks

1. 
If, within a period of five years following the date of the completion of the 
registration procedure, the proprietor has not put the trade mark to genuine 
use in the Member State in connection with the goods or services in respect of 
which it is registered, or if such use has been suspended during a continuous 
five-year period, the trade mark shall be subject to the limits and sanctions 
provided for in Article 17, Article 19(1), Article 44(1) and (2), and Article 46(3) 
and (4), unless there are proper reasons for non-use.

EUTMR 
Art. 18, 78, 
87 

2.  Where a Member State provides for opposition proceedings following reg-
istration,  the  five-year  period  referred  to  in  paragraph  1  shall  be  calculated 
from the date when the mark can no longer be opposed or, in the event that 
an opposition has been lodged, from the date when a decision terminating the 
opposition proceedings became final or the opposition was withdrawn.

3.  With regard to trade marks registered under international arrangements 
and having effect in the Member State, the five-year period referred to in para-
graph  1  shall  be  calculated  from  the  date  when  the  mark  can  no  longer  be 
rejected or opposed. Where an opposition has been lodged or when an objec-
tion on absolute or relative grounds has been notified, the period shall be cal-
culated from the date when a decision terminating the opposition proceedings 
or  a  ruling  on  absolute  or  relative  grounds  for  refusal  became  final  or  the 
opposition was withdrawn.

The date of commencement of the five-year period, as referred to in para-

4. 
graphs 1 and 2, shall be entered in the register.

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5. 

The following shall also constitute use within the meaning of paragraph 1:

(a)  use of the 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 regis-
tered in the name of the proprietor;

(b)  affixing  of  the  trade  mark  to  goods  or  to  the  packaging  thereof  in  the 
Member State concerned solely for export purposes.

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

Article 17
Non-use as defence in infringement proceedings

EUTMR 
Art. 47, 64, 
137 

The proprietor of a trade mark shall be entitled to prohibit the use of a sign only 
to the extent that the proprietor’s rights are not liable to be revoked pursuant 
to Article 19 at the time the infringement action is brought. If the defendant so 
requests, the proprietor of the trade mark shall furnish proof that, during the 
five-year period preceding the date of bringing the action, the trade mark has 
been put to genuine use as provided in Article 16 in connection with the goods 
or services in respect of which it is registered and which are cited as justifica-
tion for the action, or that there are proper reasons for non-use, provided that 
the registration procedure of the trade mark has at the date of bringing the 
action been completed for not less than five years.

Article 18
Intervening right of the proprietor of a later registered trade mark as 
defence in infringement proceedings

EUTMR 
Art. 16 

1. 
In infringement proceedings, the proprietor of a trade mark shall not be 
entitled to prohibit the use of a later registered mark where that later trade 
mark would not be declared invalid pursuant to Article 8, Article 9(1) or (2) or 
Article 46(3).

2. 
In infringement proceedings, the proprietor of a trade mark shall not be 
entitled to prohibit the use of a later registered EU trade mark where that later 
trade mark would not be declared invalid pursuant to Article 53(1), (3) or (4), 
54(1) or (2) or 57(2) of Regulation (EC) No 207/2009.

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

The TM Directive 309

earlier trade mark in infringement proceedings, even though that earlier right 
may no longer be invoked against the later trade mark.

SECTION 4 
Revocation of trade mark rights

Article 19
Absence of genuine use as ground for revocation

1.  A trade mark shall be liable to revocation if, within a continuous five-year 
period, it has not been put to genuine use in the Member State in connection 
with the goods or services in respect of which it is registered, and there are no 
proper reasons for non-use.

EUTMR 
Art. 58 

2.  No person may claim that the proprietor’s rights in a trade mark should be 
revoked where, during the interval between expiry of the five-year period and 
filing of the application for revocation, genuine use of the trade mark has been 
started or resumed.

3. 
The commencement or resumption of use within the three-month period 
preceding the filing of the application for revocation which began at the earli-
est on expiry of the continuous five-year period of non-use shall be disregarded 
where preparations for the commencement or resumption occur only after the 
proprietor becomes aware that the application for revocation may be filed.

Article 20
Trade mark having become generic or misleading indication as grounds for 
revocation

A  trade  mark  shall  be  liable  to  revocation  if,  after  the  date  on  which  it  was 
registered:

EUTMR 
Art. 58 

(a)  as a result of acts or inactivity of the proprietor, it has become the common 
name in the trade for a product or service in respect of which it is registered;

(b)  as a result of the use made of it by the proprietor of the trade mark or 
with the proprietor’s consent in respect of the goods or services for which it is 
registered, it is liable to mislead the public, particularly as to the nature, quality 
or geographical origin of those goods or services.

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Article 21
Revocation relating to only some of the goods or services

EUTMR 
Art. 58, 64 

Where grounds for revocation of a trade mark exist in respect of only some of 
the goods or services for which that trade mark has been registered, revocation 
shall cover those goods or services only.

SECTION 5 
Trade marks as objects of property

Article 22
Transfer of registered trade marks

EUTMR 
Art. 20 

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

2.  A transfer of the whole of the undertaking shall include the transfer of the 
trade mark except where there is agreement to the contrary or circumstances 
clearly dictate otherwise. This provision shall apply to the contractual obliga-
tion to transfer the undertaking.

3.  Member States shall have procedures in place to allow for the recordal of 
transfers in their registers.

Article 23
Rights in rem

EUTMR 
Art. 22 

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

2.  Member States shall have procedures in place to allow for the recordal of 
rights in rem in their registers.

Article 24
Levy of execution

EUTMR 
Art. 23 

1.  A trade mark may be levied in execution.

2.  Member States shall have procedures in place to allow for the recordal of 
levy of execution in their registers.

The TM Directive 311

Article 25
Licensing

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

EUTMR 
Art. 25 

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

(a) 

its duration;

(b) 

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

(c) 

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

(d) 

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

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

(e) 
licensee.

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

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

5.  Member States shall have procedures in place to allow for the recordal of 
licences in their registers.

Article 26
Applications for a trade mark as an object of property

Articles 22 to 25 shall apply to applications for trade marks.

EUTMR 
Art. 28 

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SECTION 6 
Guarantee or certification marks and collective marks

Article 27
Definitions

For the purposes of this Directive, the following definitions apply:

(a) 
‘guarantee or certification mark’ means a 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 material, 
mode of manufacture of goods or performance of services, quality, accuracy or 
other characteristics, from goods and services which are not so certified;

‘collective mark’ means a trade mark which is described as such when the 
(b) 
mark is applied for and is capable of distinguishing the goods or services of the 
members of an association which is the proprietor of the mark from the goods 
or services of other undertakings.

Article 28
Guarantee or certification marks

EUTMR 
Art. 83, 85, 
87, 91, 92  

1.  Member States may provide for the registration of guarantee or certifica-
tion marks.

2.  Any  natural  or  legal  person,  including  institutions,  authorities  and  bod-
ies  governed  by  public  law,  may  apply  for  guarantee  or  certification  marks 
provided that such person does not carry on a business involving the supply of 
goods or services of the kind certified.

Member States may provide that a guarantee or certification mark is not to be 
registered unless the applicant is competent to certify the goods or services for 
which the mark is to be registered.

3.  Member States may provide that guarantee or certification marks are not 
to be registered, or are to be revoked or declared invalid, on grounds other than 
those specified in Articles 4, 19 and 20, where the function of those marks so 
requires.

4.  By way of derogation from Article 4(1)(c), Member States may provide that 
signs or indications which may serve, in trade, to designate the geographical 
origin of the goods or services may constitute guarantee or certification marks. 
Such a guarantee or certification mark shall not entitle the proprietor to pro-

The TM Directive 313

hibit a third party from using in the course of trade such signs or indications, 
provided  that  third  party  uses  them  in  accordance  with  honest  practices  in 
industrial or commercial matters. In particular, such a mark may not be invoked 
against a third party who is entitled to use a geographical name.

5. 
The requirements laid down in Article 16 shall be satisfied where genuine 
use of a guarantee or certification mark in accordance with Article 16 is made 
by any person who has the authority to use it.

Article 29
Collective marks

1.  Member States shall provide for the registration of collective marks.

EUTMR 
Art. 74  

2.  Associations of manufacturers, producers, suppliers of services or traders, 
which, under the terms of the law governing them, have the capacity in their 
own  name  to  have  rights  and  obligations,  to  make  contracts  or  accomplish 
other legal acts, and to sue and be sued, as well as legal persons governed by 
public law, may apply for collective marks.

3.  By way of derogation from Article 4(1)(c), Member States may provide that 
signs or indications which may serve, in trade, to designate the geographical 
origin of the goods or services may constitute collective marks. Such a collec-
tive mark shall not entitle the proprietor to prohibit a third party from using, 
in the course of trade, such signs or indications, provided that third party uses 
them in accordance with honest practices in industrial or commercial matters. 
In particular, such a mark may not be invoked against a third party who is enti-
tled to use a geographical name.

Article 30
Regulations governing use of a collective mark

1.  An applicant for a collective mark shall submit the regulations governing 
its use to the office.

EUTMR 
Art. 75 

2. 
The regulations governing use shall specify at least the persons author-
ised to use the mark, the conditions of membership of the association and the 
conditions of use of the mark, including sanctions. The regulations governing 
use  of  a  mark  referred  to  in  Article  29(3)  shall  authorise  any  person  whose 
goods  or  services  originate  in  the  geographical  area  concerned  to  become 
a member of the association which is the proprietor of the mark, provided that 
the person fulfils all the other conditions of the regulations.

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Article 31
Refusal of an application

EUTMR 
Art. 76 

1. 
In addition to the grounds for refusal of a trade mark application provided 
for in Article 4, where appropriate with the exception of Article 4(1)(c) concern-
ing signs or indications which may serve, in trade, to designate the geographi-
cal origin of the goods or services, and Article 5,and without prejudice to the 
right of an office not to undertake examination ex officio of relative grounds, 
an application for a collective mark shall be refused where the provisions of 
point (b) of Article 27, Article 29 or Article 30 are not satisfied, or where the 
regulations governing use of that collective mark are contrary to public policy 
or to accepted principles of morality.

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

3.  An application shall not be refused if the applicant, as a result of amend-
ment  of  the  regulations  governing  use  of  the  collective  mark,  meets  the 
requirements referred to in paragraphs 1 and 2.

Article 32
Use of collective marks

EUTMR 
Art. 78 

The requirements of Article 16 shall be satisfied where genuine use of a col-
lective mark in accordance with that Article is made by any person who has 
authority to use it.

Article 33
Amendments to the regulations governing use of a collective mark

EUTMR 
Art. 79 

The proprietor of a collective mark shall submit to the office any amended 

1. 
regulations governing use.

2.  Amendments to the regulations governing use shall be mentioned in the 
register  unless  the  amended  regulations  do  not  satisfy  the  requirements  of 
Article 30 or involve one of the grounds for refusal referred to in Article 31.

3. 
For the purposes of this Directive, amendments to the regulations govern-
ing use shall take effect only from the date of entry of the mention of those 
amendments in the register.

The TM Directive 315

Article 34
Persons entitled to bring an action for infringement

1.  Article 25(3) and (4) shall apply to every person who has the authority to 
use a collective mark.

EUTMR 
Art. 80 

The proprietor of a collective mark shall be entitled to claim compensation 
2. 
on behalf of persons who have authority to use the mark where those persons 
have sustained damage as a result of unauthorised use of the mark.

Article 35
Additional grounds for revocation

In addition to the grounds for revocation provided for in Articles 19 and 20, the 
rights of the proprietor of a collective mark shall be revoked on the following 
grounds:

EUTMR 
Art. 81 

(a) 
the proprietor does not take reasonable steps to prevent the mark being 
used in a manner that is incompatible with the conditions of use laid down in 
the regulations governing use, including any amendments thereto mentioned 
in the register;

(b) 
the manner in which the mark has been used by authorised persons has 
caused it to become liable to mislead the public in the manner referred to in 
Article 31(2);

(c)  an  amendment  to  the  regulations  governing  use  of  the  mark  has  been 
mentioned in the register in breach of Article 33(2), unless the proprietor of the 
mark, by further amending the regulations  governing use, complies  with  the 
requirements of that Article.

Article 36
Additional grounds for invalidity

In addition to the grounds for invalidity provided for in Article 4, where appro-
priate with the exception of Article 4(1)(c) concerning signs or indications which 
may serve, in trade, to designate the geographical origin of the goods or ser-
vices, and Article 5, a collective mark which is registered in breach of Article 31 
shall be declared invalid unless the proprietor of the mark, by amending the 
regulations governing use, complies with the requirements of Article 31.

EUTMR 
Art. 82 

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CHAPTER 3 
PROCEDURES

SECTION 1 
Application and registration

Article 37
Application requirements

EUTMR 
Art. 31 

1.  An application for registration of a trade mark shall contain at least all of 
the following:

(a)  a request for registration;

(b) 

information identifying the applicant;

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

(d)  a representation of the trade mark, which satisfies the requirements set 
out in point (b) of Article 3.

The application for a trade mark shall be subject to the payment of a fee 

2. 
determined by the Member State concerned.

Article 38
Date of filing

EUTMR 
Art. 32 

1. 
The date of filing of a trade mark application shall be the date on which 
the documents containing the information specified in Article 37(1) are filed 
with the office by the applicant.

2.  Member States may, in addition, provide that the accordance of the date 
of filing is to be subject to the payment of a fee as referred to in Article 37(2).

Article 39
Designation and classification of goods and services

EUTMR 
Art. 33 

1. 
The  goods  and  services  in  respect  of  which  trade  mark  registration  is 
applied for shall be classified in conformity with the system of classification 
established by the Nice Agreement Concerning the International Classification 

The TM Directive 317

of Goods and Services for the Purposes of the Registration of Marks of 15 June 
1957 (‘the Nice Classification’).

2. 
The goods and services for which protection 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.

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 
set out in this Article.

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

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 compris-
ing a claim to goods or services which cannot be so understood.

6.  Where  the  applicant  requests  registration  for  more  than  one  class,  the 
applicant shall group the goods and services 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 shall present them in the 
order of the classes.

7.  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. 
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.

Article 40
Observations by third parties

1.  Member States may provide that prior to registration of a trade mark, any 
natural  or  legal  person  and  any  group  or  body  representing  manufacturers, 
producers, suppliers of services, traders or consumers may submit to the office 
written observations, explaining on which grounds the trade mark should not 
be registered ex officio.

EUTMR 
Art. 45 

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Persons and groups or bodies, as referred to in the first subparagraph, shall not 
be parties to the proceedings before the office.

2. 
In addition to the grounds referred to in paragraph 1 of this Article, any 
natural  or  legal  person  and  any  group  or  body  representing  manufacturers, 
producers, suppliers of services, traders or consumers may submit to the office 
written  observations  based  on  the  particular  grounds  on  which  the  applica-
tion for a collective mark should be refused under Article 31(1) and (2). This 
provision may be extended to cover certification and guarantee marks where 
regulated in Member States.

Article 41
Division of applications and registrations

EUTMR 
Art. 50, 56 

The  applicant  or  proprietor  may  divide  a  national  trade  mark  application  or 
registration into  two or more separate  applications  or registrations  by send-
ing a declaration to the office and indicating for each divisional application or 
registration the goods or services covered by the original application or regis-
tration which are to be covered by the divisional applications or registrations.

Article 42
Class fees

EUTMR 
Art. 31, 53 

Member States may provide that the application and renewal of a trade mark is 
to be subject to an additional fee for each class of goods and services beyond 
the first class.

SECTION 2 
Procedures for opposition, revocation and invalidity

Article 43
Opposition procedure

EUTMR 
Art. 46, 47 

1.  Member States shall provide for an efficient and expeditious administra-
tive procedure before their offices for opposing the registration of a trade mark 
application on the grounds provided for in Article 5.

2. 
The  administrative  procedure  referred  to  in  paragraph  1  of  this  Article 
shall at least provide that the proprietor of an earlier trade mark as referred to 
in Article 5(2) and Article 5(3)(a), and the person authorised under the relevant 
law  to  exercise  the  rights  arising  from  a  protected  designation  of  origin  or 
geographical indication as referred to in Article 5(3)(c) shall be entitled to file 
a notice of opposition. A notice of opposition may be filed on the basis of one 

The TM Directive 319

or more earlier rights, provided that they all belong to the same proprietor, and 
on the basis of part or the totality of the goods or services in respect of which 
the earlier right is protected or applied for, and may be directed against part or 
the totality of the goods or services in respect of which the contested mark is 
applied for.

The  parties  shall  be  granted,  at  their  joint  request,  a  minimum  of  two 
3. 
months  in  the  opposition  proceedings  in  order  to  allow  for  the  possibility  of 
a friendly settlement between the opposing party and the applicant.

Article 44
Non-use as defence in opposition proceedings

1. 
In opposition proceedings pursuant to Article 43, where at the filing date 
or  date  of  priority  of  the  later  trade  mark,  the  five-year  period  within  which 
the earlier trade mark must have been put to genuine use as provided for in 
Article  16  had  expired,  at  the  request  of  the  applicant,  the  proprietor  of  the 
earlier trade mark who has given notice of opposition shall furnish proof that 
the earlier trade mark has been put to genuine use as provided for in Article 16 
during the five-year period preceding the filing date or date of priority of the 
later trade mark, or that proper reasons for non-use existed. In the absence of 
proof to this effect, the opposition shall be rejected.

EUTMR 
Art. 47 

If the earlier trade mark has been used in relation to only part of the goods 
2. 
or services for which it is registered, it shall, for the purpose of the examination 
of the opposition as provided for in paragraph 1, be deemed to be registered in 
respect of that part of the goods or services only.

Paragraphs 1 and 2 of this Article shall also apply where the earlier trade 
3. 
mark  is  an  EU  trade  mark.  In  such  a  case,  the  genuine  use  of  the  EU  trade 
mark shall be determined in accordance with Article 15 of Regulation (EC) No 
207/2009.

Article 45
Procedure for revocation or declaration of invalidity

1.  Without prejudice to the right of the parties to appeal to the courts, Mem-
ber  States  shall  provide  for  an  efficient  and  expeditious  administrative  pro-
cedure  before  their  offices  for  the  revocation  or  declaration  of  invalidity  of 
a trade mark.

EUTMR 
Art. 58, 59, 
60, 63 

The administrative procedure for revocation shall provide that the trade 

2. 
mark is to be revoked on the grounds provided for in Articles 19 and 20.

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Directive  (eU) 2015/2436 of  the  eUropean  parliament  anD of  the  coUncil

The  administrative  procedure  for  invalidity  shall  provide  that  the  trade 

3. 
mark is to be declared invalid at least on the following grounds:

the trade mark should not have been registered because it does not com-

(a) 
ply with the requirements provided for in Article 4;

the trade mark should not have been registered because of the existence 

(b) 
of an earlier right within the meaning of Article 5(1) to (3).

4. 
The  administrative  procedure  shall  provide  that  at  least  the  following 
are to be entitled to file an application for revocation or for a declaration of 
invalidity:

(a) 
in the case of paragraph 2 and paragraph 3(a), any natural or legal person 
and  any  group  or  body  set  up  for  the  purpose  of  representing  the  interests 
of manufacturers, producers, suppliers of services, traders or consumers, and 
which, under the terms of the law governing it, has the capacity to sue in its 
own name and to be sued;

in the case of paragraph 3(b) of this Article, the proprietor of an earlier 
(b) 
trade  mark  as  referred  to  in  Article  5(2)  and  Article  5(3)(a),  and  the  person 
authorised  under  the  relevant  law  to  exercise  the  rights  arising  from  a  pro-
tected designation of origin or geographical indication as referred to in Article 
5(3)(c).

5.  An  application  for  revocation  or  for  a  declaration  of  invalidity  may  be 
directed  against  a  part  or  the  totality  of  the  goods  or  services  in  respect  of 
which the contested mark is registered.

6.  An application for a declaration of invalidity may be filed on the basis of 
one or more earlier rights, provided they all belong to the same proprietor.

Article 46
Non-use as a defence in proceedings seeking a declaration of invalidity

EUTMR 
Art. 64, 
137 

1. 
In proceedings for a declaration of invalidity based on a registered trade 
mark with an earlier filing date or priority date, if the proprietor of the later 
trade mark so requests, the proprietor of the earlier trade mark shall furnish 
proof that, during the five-year period preceding the date of the application for 
a declaration of invalidity, the earlier trade mark has been put to genuine use, 
as provided for in Article 16, in connection with the goods or services in respect 
of which it is registered and which are cited as justification for the application, 
or  that  there  are  proper  reasons  for  non-  use,  provided  that  the  registration 

The TM Directive 321

process of the earlier trade mark has at the date of the application for a decla-
ration of invalidity been completed for not less than five years.

2.  Where, at the filing date or date of priority of the later trade mark, the 
five-year period within which the earlier trade mark was to have been put to 
genuine  use,  as  provided  for  in  Article  16,  had  expired,  the  proprietor  of  the 
earlier trade mark shall, in addition to the proof required under paragraph 1 of 
this Article, furnish proof that the trade mark was put to genuine use during 
the five-year period preceding the filing date or date of priority, or that proper 
reasons for non-use existed.

3. 
In the absence of the proof referred to in paragraphs 1 and 2, an applica-
tion for a declaration of invalidity on the basis of an earlier trade mark shall be 
rejected.

If the earlier trade mark has been used in accordance with Article 16 in 
4. 
relation to only part of the goods or services for which it is registered, it shall, 
for the purpose of the examination of the application for a declaration of inva-
lidity, be deemed to be registered in respect of that part of the goods or ser-
vices only.

5. 
Paragraphs 1 to 4 of this Article shall also apply where the earlier trade 
mark is an EU trade mark. In such a case, genuine use of the EU trade mark shall 
be determined in accordance with Article 15 of Regulation (EC) No 207/2009.

Article 47
Consequences of revocation and invalidity

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

EUTMR 
Art. 62 

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

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Directive  (eU) 2015/2436 of  the  eUropean  parliament  anD of  the  coUncil

SECTION 3 
Duration and renewal of registration

Article 48
Duration of registration

EUTMR 
Art. 52 

Trade marks shall be registered for a period of 10 years from the date of 

1. 
filing of the application.

Registration  may  be  renewed  in  accordance  with  Article  49  for  further 

2. 
10-year periods.

Article 49
Renewal

EUTMR 
Art. 53 

1. 
Registration of a trade mark shall be renewed at the request of the propri-
etor of the trade mark or any person authorised to do so by law or by contract, 
provided  that  the  renewal  fees  have  been  paid.  Member  States  may  provide 
that receipt of payment of the renewal fees is to be deemed to constitute such 
a request.

2. 
The office shall inform the proprietor of the trade mark of the expiry of 
the registration at least six months before the said expiry. The office shall not 
be held liable if it fails to give such information.

3. 
The request for renewal shall be submitted and the renewal fees shall be 
paid within a period of at least six months immediately preceding the expiry 
of the registration. Failing that, the request may be submitted within a further 
period of six months immediately following the expiry of the registration or of 
the subsequent renewal thereof. The renewal fees and an additional fee shall 
be paid within that further period.

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

Renewal shall take effect from the day following the date on which the 

5. 
existing registration expires. The renewal shall be recorded in the register.

The TM Directive 323

SECTION 4 
Communication with the office

Article 50
Communication with the office

Parties  to  the  proceedings  or,  where  appointed,  their  representatives,  shall 
designate  an  official  address  for  all  official  communication  with  the  office. 
Member States shall have the right to require that such an official address be 
situated in the European Economic Area.

EUTMR 
Art. 100 

CHAPTER 4 
ADMINISTRATIVE COOPERATION

Article 51
Cooperation in the area of trade mark registration and administration

The offices shall be free to cooperate effectively with each other and with the 
European Union Intellectual Property Office in order to promote convergence 
of practices and tools in relation to the examination and registration of trade 
marks.

EUTMR 
Art. 152 

Article 52
Cooperation in other areas

The offices shall be free to cooperate effectively with each other and with the 
European Union Intellectual Property Office in all areas of their activities other 
than those referred to in Article 51 which are of relevance for the protection of 
trade marks in the Union.

EUTMR 
Art. 117 

CHAPTER 5 
FINAL PROVISIONS

Article 53
Data protection

The processing of any personal data carried out in the Member States in the 
framework  of  this  Directive  shall  be  subject  to  national  law  implementing 
Directive 95/46/EC.

EUTMR 
Art. 149

324

Directive  (eU) 2015/2436 of  the  eUropean  parliament  anD of  the  coUncil

Article 54
Transposition

1.  Member States shall bring into force the laws, regulations and administra-
tive provisions necessary to comply with Articles 3 to 6, Articles 8 to 14, Articles 
16, 17 and 18, Articles 22 to 39, Article 41, Articles 43 to 50 by 14 January 
2019. Member States shall bring into force the laws, regulations and admin-
istrative provisions to comply with Article 45 by 14 January 2023. They shall 
immediately communicate the text of those measures to the Commission.

When Member States adopt those measures, they shall contain a reference to 
this Directive or be accompanied by such a reference on the occasion of their 
official publication. They shall also include a statement that references in exist-
ing laws, regulations and administrative provisions to the Directive repealed by 
this Directive shall be construed as references to this Directive. Member States 
shall determine how such reference is to be made and how that statement is 
to be formulated.

2.  Member  States  shall  communicate  to  the  Commission  the  text  of  the 
main provisions of national law which they adopt in the field covered by this 
Directive.

Article 55
Repeal

Directive 2008/95/EC is repealed with effect from 15 January 2019, without 
prejudice to the obligations of the Member States relating to the time limit for 
the transposition into national law of Directive 89/104/EEC set out in Part B of 
Annex I to Directive 2008/95/EC.

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

Article 56
Entry into Force

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

Articles 1, 7, 15, 19, 20, 21 and 54 to 57 shall apply from 15 January 2019.

The TM Directive 325

Article 57
Addresses

This Directive is addressed to the Member States.

Done at Strasbourg, 16 December 2015.

For the European Parliament 
The President 
A. SCHULZ 

For the Council 
The President 
B. SCHMIT

 
 
 
326

Directive  (eU) 2015/2436 of  the  eUropean  parliament  anD of  the  coUncil

ANNEX 
Correlation table

Directive 2008/95/EC

This Directive

Article 1

—

Article 2

Article 3(1)(a) to (h)

—

Article 3(2)(a) to (c)

Article 3(2)(d)

Article 1

Article 2

Article 3

Article 4(1)(a) to (h)

Article 4(1)(i) to (l)

Article 4(3)(a) to (c)

Article 4(2)

Article 3(3), first sentence

Article 4(4), first sentence

—

Article 4(4), second sentence

Article 3(3), second sentence

Article 3(4)

Article 4(1) and (2)

Article 4(3) and (4)(a)

—

—

Article 4(4)(b) and (c)

Article 4(4)(d) to (f)

Article 4(4)(g)

Article 4(5) and (6)

—

Article 5(1), first sentence

Article 4(5)

—

Article 5(1) and (2)

Article 5(3)(a)

Article 5(3)(b)

Article 5(3)(c)

Article 5(4)(a) and (b)

—

Article 5(4)(c)

Article 5(5) and (6)

Article 8

Article 10(1)

Article 5(1), second sentence, introductory part Article 10(2), introductory part of the sentence

Article 5(1)(a) and (b)

Article 5(2)

Article 5(3)(a) to (c)

—

Article 5(3)(d)

—

—

Article 5(4) and (5)

—

Article 10(2)(a) and (b)

Article 10(2)(c)

Article 10(3)(a) to (c)

Article 10(3)(d)

Article 10(3)(e)

Article 10(3)(f)

Article 10(4)

Article 10(5) and (6)

Article 11

The TM Directive 327

Directive 2008/95/EC

—

—

This Directive

Article 12

Article 13

Article 6(1)(a) to (c)

Article 14(1)(a) to (c), and (2)

Article 6(2)

Article 7

Article 8(1) and (2)

—

Article 9

Article 10(1), first subparagraph

—

Article 10(1), second subparagraph

Article 10(2)

Article 10(3)

Article 11(1)

Article 11(2)

Article 11(3)

Article 11(4)

—

Article 12(1), first subparagraph

Article 12(1), second subparagraph

Article 12(1), third subparagraph

Article 12(2)

Article 13

Article 14

—

—

—

Article 15(1)

Article 15(2)

—

—

Article 16

Article 17

Article 18

Article 19

Article 14(3)

Article 15

Article 25(1) and (2)

Article 25(3) to (5)

Article 9

Article 16(1)

Article 16(2) to (4)

Article 16(5)

Article 16(6)

—

Article 46(1) to (3)

Article 44(1)

Article 17

Articles 17, 44(2) and Article 46(4)

Article 18

Article 19(1)

Article 19(2)

Article 19(3)

Article 20

Article 7 and Article 21

Article 6

Articles 22 to 24

Article 26

Article 27

Article 28(1) and (3)

Article 28(4)

Article 28(2) and (5)

Articles 29 to 54(1)

Article 54(2)

Article 55

Article 56

Article 57

International 
Treaties

TABLE OF CONTENTS

PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY of 20 
March 1883 

AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY 
RIGHTS of 15 April 1994 as amended on 23 January 2017 

PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE 
INTERNATIONAL REGISTRATION OF MARKS adopted at Madrid on June 27, 1989, 
as amended on October 3, 2006, and on November 12, 2007 

329

333

351

361

International Treaties331

Paris Convention for the Protection of Industrial 
Property of 20 March 1883

as revised at Brussels on December 14, 1900,
at Washington on June 2, 1911,
at The Hague on November 6, 1925,
at London on June 2, 1934,
at Lisbon on October 31, 1958,
and at Stockholm on July 14, 1967,
and as amended on September 28, 1979

International Treaties333

PARIS CONVENTION FOR THE PROTECTION OF 
INDUSTRIAL PROPERTY of 20 March 1883

as revised at Brussels on December 14, 1900,  
at Washington on June 2, 1911,  
at The Hague on November 6, 1925,  
at London on June 2, 1934,  
at Lisbon on October 31, 1958,  
and at Stockholm on July 14, 1967  
and as amended on September 28, 1979  
- Excerpts - 

Article 1
Establishment of the Union; Scope of Industrial Property58

(1)  The countries to which this Convention applies constitute a Union for the protec-
tion of industrial property.

(2)  The protection of industrial property has as its object patents, utility models, 
industrial designs, trademarks, service marks, trade names, indications of source or 
appellations of origin, and the repression of unfair competition.

Industrial property shall be understood in the broadest sense and shall apply 
(3) 
not only to industry and commerce proper, but likewise to agricultural and extractive 
industries  and  to  all  manufactured  or  natural  products,  for  example,  wines,  grain, 
tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers, and flour.

(4)  Patents  shall  include  the  various  kinds  of  industrial  patents  recognized  by 
the laws of the countries of the Union, such as patents of importation, patents of 
improvement, patents and certificates of addition, etc.

Article 2
National Treatment for Nationals of Countries of the Union

(1)  Nationals of any country of the Union shall, as regards the protection of indus-
trial property, enjoy in all the other countries of the Union the advantages that their 
respective laws now grant, or may hereafter grant, to nationals; all without preju-
dice to the rights specially provided for by this Convention. Consequently, they shall 
have  the  same  protection  as  the  latter,  and  the  same  legal  remedy  against  any 

(58) Articles  have  been  given  titles  by  WIPO  to  facilitate  their  identification.  There  are  no  titles  in  the  signed 

(French) 

text.

International Treaties334

PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY of 20 March 1883

infringement  of  their  rights,  provided  that  the  conditions  and  formalities  imposed 
upon nationals are complied with.

(2)  However, no requirement as to domicile or establishment in the country where 
protection is claimed may be imposed upon nationals of countries of the Union for 
the enjoyment of any industrial property rights.

(3)  The  provisions  of  the  laws  of  each  of  the  countries  of  the  Union  relating  to 
judicial and administrative procedure and to jurisdiction, and to the designation of 
an address for service or the appointment of an agent, which may be required by the 
laws on industrial property are expressly reserved.

Article 3
Same Treatment for Certain Categories of Persons as for Nationals of 
Countries of the Union

Nationals  of  countries  outside  the  Union  who  are  domiciled  or  who  have  real  and 
effective industrial or commercial establishments in the territory of one of the coun-
tries of the Union shall be treated in the same manner as nationals of the countries 
of the Union.

Article 4
A to I. Patents, Utility Models, Industrial Designs, Marks, Inventors’ Certificates: 
Right of Priority. G. Patents: Division of the Application

A. —

(1)  Any person who has duly filed an application for a patent, or for the registration 
of a utility model, or of an industrial design, or of a trademark, in one of the countries 
of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other 
countries, a right of priority during the periods hereinafter fixed.

(2)  Any filing that is equivalent to a regular national filing under the domestic legis-
lation of any country of the Union or under bilateral or multilateral treaties concluded 
between  countries  of  the  Union  shall  be  recognized  as  giving  rise  to  the  right  of 
priority.

(3)  By a regular national filing is meant any filing that is adequate to establish the 
date on which the application was filed in the country concerned, whatever may be 
the subsequent fate of the application.

335

B. — 

Consequently, any subsequent filing in any of the other countries of the Union before 
the expiration of the periods referred to above shall not be invalidated by reason of 
any  acts  accomplished  in  the  interval,  in  particular,  another  filing,  the  publication 
or exploitation of the invention, the putting on sale of copies of the design, or the 
use of the mark, and such acts cannot give rise to any third-party right or any right 
of personal possession. Rights acquired by third parties before the date of the first 
application that serves as the basis for the right of priority are reserved in accord-
ance with the domestic legislation of each country of the Union.

C. —

(1)  The periods of priority referred to above shall be twelve months for patents and 
utility models, and six months for industrial designs and trademarks.

(2)  These periods shall start from the date of filing of the first application; the day 
of filing shall not be included in the period.

If the last day of the period is an official holiday, or a day when the Office is 
(3) 
not open for the filing of applications in the country where protection is claimed, the 
period shall be extended until the first following working day.

(4)  A subsequent application concerning the same subject as a previous first appli-
cation within the meaning of paragraph (2), above, filed in the same country of the 
Union shall be considered as the first application, of which the filing date shall be the 
starting point of the period of priority, if, at the time of filing the subsequent appli-
cation,  the  said  previous  application  has  been  withdrawn,  abandoned,  or  refused, 
without  having  been  laid  open  to  public  inspection  and  without  leaving  any  rights 
outstanding, and if it has not yet served as a basis for claiming a right of priority. 
The previous application may not thereafter serve as a basis for claiming a right of 
priority.

D. —

(1)  Any person desiring to take advantage of the priority of a previous filing shall 
be required to make a declaration indicating the date of such filing and the country 
in which it was made. Each country shall determine the latest date on which such 
declaration must be made.

(2)  These particulars shall be mentioned in the publications issued by the compe-
tent authority, and in particular in the patents and the specifications relating thereto.

International Treaties336

PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY of 20 March 1883

(3) The countries of the Union may require any person making a declaration of prior-
previously 
ity to produce a copy of the application (description, drawings, etc.) 
filed. The copy, certified as correct by the authority which received such application, 
shall not require any authentication, and may in any case be filed, without fee, at 
any time within three months of the filing of the subsequent application. They may 
require it to be accompanied by a certificate from the same authority showing the 
date of filing, and by a translation.

(4)  No other formalities may be required for the declaration of priority at the time 
of filing the application. Each country of the Union shall determine the consequences 
of failure to comply with the formalities prescribed by this Article, but such conse-
quences shall in no case go beyond the loss of the right of priority.

(5)  Subsequently, further proof may be required.

Any  person  who  avails  himself  of  the  priority  of  a  previous  application  shall  be 
required to specify the number of that application; this number shall be published as 
provided for by paragraph (2), above.

E. —

(1)  Where an industrial design is filed in a country by virtue of a right of priority 
based on the filing of a utility model, the period of priority shall be the same as that 
fixed for industrial designs.

(2)  Furthermore,  it  is  permissible  to  file  a  utility  model  in  a  country  by  virtue  of 
a right of priority based on the filing of a patent application, and vice versa.

F. —

No country of the Union may refuse a priority or a patent application on the ground 
that the applicant claims multiple priorities, even if they originate in different coun-
tries, or on the ground that an application claiming one or more priorities contains 
one or more elements that were not included in the application or applications whose 
priority is claimed, provided that, in both cases, there is unity of invention within the 
meaning of the law of the country.

With respect to the elements not included in the application or applications whose 
priority is claimed, the filing of the subsequent application shall give rise to a right of 
priority under ordinary conditions.

337

G. —

(1) 
If the examination reveals that an application for a patent contains more than 
one invention, the applicant may divide the application into a certain number of divi-
sional applications and preserve as the date of each the date of the initial application 
and the benefit of the right of priority, if any.

(2)  The  applicant  may  also,  on  his  own  initiative,  divide  a  patent  application  and 
preserve as the date of each divisional application the date of the initial application 
and the benefit of the right of priority, if any. Each country of the Union shall have 
the right to determine the conditions under which such division shall be authorized.

International Treaties338

PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY of 20 March 1883

H. —

Priority may not be refused on the ground that certain elements of the invention for 
which priority is claimed do not appear among the claims formulated in the appli-
cation in the country of origin, provided that the application documents as a whole 
specifically disclose such elements.

I. —

(1)  Applications  for  inventors’  certificates  filed  in  a  country  in  which  applicants 
have the right to apply at their own option either for a patent or for an inventor’s 
certificate shall give rise to the right of priority provided for by this Article, under the 
same conditions and with the same effects as applications for patents.

(2) 
In a country in which applicants have the right to apply at their own option either 
for a patent or for an inventor’s certificate, an applicant for an inventor’s certificate 
shall, in accordance with the provisions of this Article relating to patent applications, 
enjoy a right of priority based on an application for a patent, a utility model, or an 
inventor’s certificate.

Article 5
A. Patents: Importation of Articles; Failure to Work or Insufficient Working; 
Compulsory Licenses. B. Industrial Designs: Failure to Work; Importation of 
Articles. C. Marks: Failure to Use; Different Forms; Use by Co-proprietors. D. 
Patents, Utility Models, Marks, Industrial Designs: Marking

A. —

Importation by the patentee into the country where the patent has been granted 
(1) 
of articles manufactured in any of the countries of the Union shall not entail forfei-
ture of the patent.

(2)  Each country of the Union shall have the right to take legislative measures provid-
ing for the grant of compulsory licenses to prevent the abuses which might result from 
the exercise of the exclusive rights conferred by the patent, for example, failure to work.

(3)  Forfeiture  of  the  patent  shall  not  be  provided  for  except  in  cases  where  the 
grant  of  compulsory  licenses  would  not  have  been  sufficient  to  prevent  the  said 
abuses. No proceedings for the forfeiture or revocation of a patent may be instituted 
before the expiration of two years from the grant of the first compulsory license.

(4)  A compulsory license may not be applied for on the ground of failure to work 
or insufficient working before the expiration of a period of four years from the date 
of filing of the patent application or three years from the date of the grant of the 

339

patent, whichever period expires last; it shall be refused if the patentee justifies his 
inaction by legitimate reasons. Such a compulsory license shall be non-exclusive and 
shall not be transferable, even in the form of the grant of a sub-license, except with 
that part of the enterprise or goodwill which exploits such license.

(5)  The foregoing provisions shall be applicable, mutatis mutandis, to utility models.

B. — 

The protection of industrial designs shall not, under any circumstance, be subject to 
any forfeiture, either by reason of failure to work or by reason of the importation of 
articles corresponding to those which are protected.

C. —

If, in any country, use of the registered mark is compulsory, the registration may 
(1) 
be cancelled only after a reasonable period, and then only if the person concerned 
does not justify his inaction.

(2)  Use of a trademark by the proprietor in a form differing in elements which do 
not alter the distinctive character of the mark in the form in which it was registered 
in one of the countries of the Union shall not entail invalidation of the registration 
and shall not diminish the protection granted to the mark.

(3)  Concurrent use of the same mark on identical or similar goods by industrial or 
commercial establishments considered as co-proprietors of the mark according to 
the provisions of the domestic law of the country where protection is claimed shall 
not  prevent  registration  or  diminish  in  any  way  the  protection  granted  to  the  said 
mark in any country of the Union, provided that such use does not result in mislead-
ing the public and is not contrary to the public interest.

D. — 

No indication or mention of the patent, of the utility model, of the registration of the 
trademark, or of the deposit of the industrial design, shall be required upon the goods 
as a condition of recognition of the right to protection.

Article 5bis
All Industrial Property Rights: Period of Grace for the Payment of Fees for the 
Maintenance of Rights; Patents: Restoration

(1)  A period of grace of not less than six months shall be allowed for the payment 
of the fees prescribed for the maintenance of industrial property rights, subject, if 
the domestic legislation so provides, to the payment of a surcharge.

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PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY of 20 March 1883

(2)  The countries of the Union shall have the right to provide for the restoration of 
patents which have lapsed by reason of non-payment of fees.

Article 6
Marks: Conditions of Registration; Independence of Protection of Same Mark in 
Different Countries

(1)  The conditions for the filing and registration of trademarks shall be determined 
in each country of the Union by its domestic legislation.

(2)  However,  an  application  for  the  registration  of  a  mark  filed  by  a  national  of 
a  country  of  the  Union  in  any  country  of  the  Union  may  not  be  refused,  nor  may 
a registration be invalidated, on the ground that filing, registration, or renewal, has 
not been effected in the country of origin.

(3)  A mark duly registered in a country of the Union shall be regarded as independent 
of marks registered in the other countries of the Union, including the country of origin.

Article 6bis
Marks: Well-Known Marks

(1)  The countries of the Union undertake, ex officio if their legislation so permits, 
or at the request of an interested party, to refuse or to cancel the registration, and 
to prohibit the use, of a trademark which constitutes a reproduction, an imitation, 
or a translation, liable to create confusion, of a mark considered by the competent 
authority of the country of registration or use to be well known in that country as 
being already the mark of a person entitled to the benefits of this Convention and 
used for identical or similar goods. These provisions shall also apply when the essen-
tial part of the mark constitutes a reproduction of any such well-known mark or an 
imitation liable to create confusion therewith.

(2)  A period of at least five years from the date of registration shall be allowed for 
requesting the cancellation of such a mark. The countries of the Union may provide 
for a period within which the prohibition of use must be requested.

(3)  No time limit shall be fixed for requesting the cancellation or the prohibition of 
the use of marks registered or used in bad faith.

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Article 6ter
Marks: Prohibitions concerning State Emblems, Official Hallmarks, and 
Emblems of Intergovernmental Organizations

(1) 

(a)  The countries of the Union agree to refuse or to invalidate the registration, and 
to prohibit by appropriate measures the use, without authorization by the competent 
authorities,  either  as  trademarks  or  as  elements  of  trademarks,  of  armorial  bear-
ings, flags, and other State emblems, of the countries of the Union, official signs and 
hallmarks indicating control and warranty adopted by them, and any imitation from 
a heraldic point of view.

(b)  The provisions of subparagraph (a), above, shall apply equally to armorial bear-
ings, flags, other emblems, abbreviations, and names, of international intergovern-
mental organizations of which one or more countries of the Union are members, with 
the exception of armorial bearings, flags, other emblems, abbreviations, and names, 
that are already the subject of international agreements in force, intended to ensure 
their protection.

(c)  No country of the Union shall be required to apply the provisions of subpara-
graph  (b),  above,  to  the  prejudice  of  the  owners  of  rights  acquired  in  good  faith 
before the entry into force, in that country, of this Convention. The countries of the 
Union shall not be required to apply the said provisions when the use or registration 
referred to in subparagraph (a), above, is not of such a nature as to suggest to the 
public that a connection exists between the organization concerned and the armorial 
bearings, flags, emblems, abbreviations, and names, or if such use or registration is 
probably not of such a nature as to mislead the public as to the existence of a con-
nection between the user and the organization.

(2)  Prohibition of the use of official signs and hallmarks indicating control and war-
ranty shall apply solely in cases where the marks in which they are incorporated are 
intended to be used on goods of the same or a similar kind.

(3) 

(a)  For the application of these provisions, the countries of the Union agree to com-
municate reciprocally, through the intermediary of the International Bureau, the list 
of State emblems, and official signs and hallmarks indicating control and warranty, 
which they desire, or may hereafter desire, to place wholly or within certain limits 
under  the  protection  of  this  Article,  and  all  subsequent  modifications  of  such  list. 
Each country of the Union shall in due course make available to the public the lists 
so communicated.

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PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY of 20 March 1883

Nevertheless such communication is not obligatory in respect of flags of States.

(b)  The provisions of subparagraph (b) of paragraph (1) of this Article shall apply 
only to such armorial bearings, flags, other emblems, abbreviations, and names, of 
international intergovernmental organizations as the latter have communicated to 
the countries of the Union through the intermediary of the International Bureau.

(4)  Any country of the Union may, within a period of twelve months from the receipt 
of  the  notification,  transmit  its  objections,  if  any,  through  the  intermediary  of  the 
International Bureau, to the country or international intergovernmental organization 
concerned.

In  the  case  of  State  flags,  the  measures  prescribed  by  paragraph  (1),  above, 

(5) 
shall apply solely to marks registered after November 6, 1925.

In the case of State emblems other than flags, and of official signs and hall-
(6) 
marks of the countries of the Union, and in the case of armorial bearings, flags, other 
emblems,  abbreviations,  and  names,  of  international  intergovernmental  organiza-
tions, these provisions shall apply only to marks registered more than two months 
after receipt of the communication provided for in paragraph (3), above.

(7) 
In cases of bad faith, the countries shall have the right to cancel even those 
marks  incorporating  State  emblems,  signs,  and  hallmarks,  which  were  registered 
before November 6, 1925.

(8)  Nationals of any country who are authorized to make use of the State emblems, 
signs, and hallmarks, of their country may use them even if they are similar to those 
of another country.

(9)  The countries of the Union undertake to prohibit the unauthorized use in trade 
of the State armorial bearings of the other countries of the Union, when the use is of 
such a nature as to be misleading as to the origin of the goods.

(10)  The above provisions shall not prevent the countries from exercising the right 
given in paragraph (3) of Article 6quinquies, Section B, to refuse or to invalidate the 
registration of marks incorporating, without authorization, armorial bearings, flags, 
other  State  emblems,  or  official  signs  and  hallmarks  adopted  by  a  country  of  the 
Union, as well as the distinctive signs of international intergovernmental organiza-
tions referred to in paragraph (1), above.

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Article 6quater
Marks: Assignment of Marks

(1)  When, in accordance with the law of a country of the Union, the assignment of 
a mark is valid only if it takes place at the same time as the transfer of the business 
or  goodwill  to  which  the  mark  belongs,  it  shall  suffice  for  the  recognition  of  such 
validity that the portion of the business or goodwill located in that country be trans-
ferred to the assignee, together with the exclusive right to manufacture in the said 
country, or to sell therein, the goods bearing the mark assigned.

(2)  The foregoing provision does not impose upon the countries of the Union any 
obligation to regard as valid the assignment of any mark the use of which by the 
assignee would, in fact, be of such a nature as to mislead the public, particularly as 
regards the origin, nature, or essential qualities, of the goods to which the mark is 
applied.

Article 6quinquies
Marks: Protection of Marks Registered in One Country of the Union in the Other 
Countries of the Union

A. —

(1)  Every trademark duly registered in the country of origin shall be accepted for fil-
ing and protected as is in the other countries of the Union, subject to the reservations 
indicated in this Article. Such countries may, before proceeding to final registration, 
require the production of a certificate of registration in the country of origin, issued 
by the competent authority. No authentication shall be required for this certificate.

(2)  Shall be considered the country of origin the country of the Union where the 
applicant has a real and effective industrial or commercial establishment, or, if he 
has no such establishment within the Union, the country of the Union where he has 
his domicile, or, if he has no domicile within the Union but is a national of a country 
of the Union, the country of which he is a national.

B. — 

Trademarks covered by this Article may be neither denied registration nor invalidated 
except in the following cases:

1.  when they are of such a nature as to infringe rights acquired by third parties in 
the country where protection is claimed;

2.  when they are devoid of any distinctive character, or consist exclusively of signs 
or  indications  which  may  serve,  in  trade,  to  designate  the  kind,  quality,  quantity, 

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PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY of 20 March 1883

intended purpose, value, place of origin, of the goods, or the time of production, or 
have become customary in the current language or in the bona fide and established 
practices of the trade of the country where protection is claimed;

3.  when  they  are  contrary  to  morality  or  public  order  and,  in  particular,  of  such 
a nature as to deceive the public. It is understood that a mark may not be considered 
contrary to public order for the sole reason that it does not conform to a provision of 
the legislation on marks, except if such provision itself relates to public order.

This provision is subject, however, to the application of Article 10bis.

C. —

(1) 
In determining whether a mark is eligible for protection, all the factual circum-
stances must be taken into consideration, particularly the length of time the mark 
has been in use.

(2)  No trademark shall be refused in the other countries of the Union for the sole 
reason that it differs from the mark protected in the country of origin only in respect 
of elements that do not alter its distinctive character and do not affect its identity in 
the form in which it has been registered in the said country of origin.

D. — 

No person may benefit from the provisions of this Article if the mark for which he 
claims protection is not registered in the country of origin.

E. — 

However, in no case shall the renewal of the registration of the mark in the country 
of origin involve an obligation to renew the registration in the other countries of the 
Union in which the mark has been registered.

F. — 

The benefit of priority shall remain unaffected for applications for the registration of 
marks filed within the period fixed by Article 4, even if registration in the country of 
origin is effected after the expiration of such period.

Article 6sexies
Marks: Service Marks

The  countries  of  the  Union  undertake  to  protect  service  marks.  They  shall  not  be 
required to provide for the registration of such marks.

345

Article 6septies
Marks: Registration in the Name of the Agent or Representative of the 
Proprietor Without the Latter’s Authorization

(1) 
If the agent or representative of the person who is the proprietor of a mark in 
one of the countries of the Union applies, without such proprietor’s authorization, for 
the registration of the mark in his own name, in one or more countries of the Union, 
the proprietor shall be entitled to oppose the registration applied for or demand its 
cancellation or, if the law of the country so allows, the assignment in his favor of the 
said registration, unless such agent or representative justifies his action.

(2)  The  proprietor  of  the  mark  shall,  subject  to  the  provisions  of  paragraph  (1), 
above, be entitled to oppose the use of his mark by his agent or representative if he 
has not authorized such use.

(3)  Domestic legislation may provide an equitable time limit within which the pro-
prietor of a mark must exercise the rights provided for in this Article.

Article 7
Marks: Nature of the Goods to which the Mark is Applied

The nature of the goods to which a trademark is to be applied shall in no case form 
an obstacle to the registration of the mark.

Article 7bis
Marks: Collective Marks

(1)  The countries of the Union undertake to accept for filing and to protect collec-
tive marks belonging to associations the existence of which is not contrary to the 
law of the country of origin, even if such associations do not possess an industrial or 
commercial establishment.

(2)  Each country shall be the judge of the particular conditions under which a collec-
tive mark shall be protected and may refuse protection if the mark is contrary to the 
public interest.

(3)  Nevertheless, the protection of these marks shall not be refused to any associa-
tion the existence of which is not contrary to the law of the country of origin, on the 
ground that such association is not established in the country where protection is 
sought or is not constituted according to the law of the latter country.

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PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY of 20 March 1883

Article 8
Trade Names

A trade name shall be protected in all the countries of the Union without the obliga-
tion of filing or registration, whether or not it forms part of a trademark.

Article 9
Marks, Trade Names: Seizure, on Importation, etc., of Goods Unlawfully Bearing 
a Mark or Trade Name

(1)  All  goods  unlawfully  bearing  a  trademark  or  trade  name  shall  be  seized  on 
importation  into  those  countries  of  the  Union  where  such  mark  or  trade  name  is 
entitled to legal protection.

(2)  Seizure shall likewise be effected in the country where the unlawful affixation 
occurred or in the country into which the goods were imported.

(3)  Seizure  shall  take  place  at  the  request  of  the  public  prosecutor,  or  any  other 
competent  authority,  or  any  interested  party,  whether  a  natural  person  or  a  legal 
entity, in conformity with the domestic legislation of each country.

(4)  The authorities shall not be bound to effect seizure of goods in transit.

If the legislation of a country does not permit seizure on importation, seizure 

(5) 
shall be replaced by prohibition of importation or by seizure inside the country.

(6) 
If the legislation of a country permits neither seizure on importation nor pro-
hibition  of  importation  nor  seizure  inside  the  country,  then,  until  such  time  as  the 
legislation is modified accordingly, these measures shall be replaced by the actions 
and remedies available in such cases to nationals under the law of such country.

Article 10
False Indications: Seizure, on Importation, etc., of Goods Bearing False 
Indications as to their Source or the Identity of the Producer

(1)  The provisions of the preceding Article shall apply in cases of direct or indirect 
use of a false indication of the source of the goods or the identity of the producer, 
manufacturer, or merchant.

(2)  Any producer, manufacturer, or merchant, whether a natural person or a legal 
entity,  engaged  in  the  production  or  manufacture  of  or  trade  in  such  goods  and 
established  either  in  the  locality  falsely  indicated  as  the  source,  or  in  the  region 
where such locality is situated, or in the country falsely indicated, or in the country 

347

where the false indication of source is used, shall in any case be deemed an inter-
ested party.

Article 10bis
Unfair Competition

(1)  The countries of the Union are bound to assure to nationals of such countries 
effective protection against unfair competition.

(2)  Any act of competition contrary to honest practices in industrial or commercial 
matters constitutes an act of unfair competition.

(3)  The following in particular shall be prohibited:

1. 
all acts of such a nature as to create confusion by any means whatever with the 
establishment, the goods, or the industrial or commercial activities, of a competitor;

2. 
false  allegations  in  the  course  of  trade  of  such  a  nature  as  to  discredit  the 
establishment, the goods, or the industrial or commercial activities, of a competitor;

3. 
indications  or  allegations  the  use  of  which  in  the  course  of  trade  is  liable  to 
mislead the public as to the nature, the manufacturing process, the characteristics, 
the suitability for their purpose, or the quantity, of the goods.

Article 10ter
Marks, Trade Names, False Indications, Unfair Competition: Remedies, Right to 
Sue

(1)  The countries of the Union undertake to assure to nationals of the other coun-
tries  of  the  Union  appropriate  legal  remedies  effectively  to  repress  all  the  acts 
referred to in Articles 9, 10, and 10bis.

(2)  They undertake, further, to provide measures to permit federations and associa-
tions representing interested industrialists, producers, or merchants, provided that 
the existence of such federations and associations is not contrary to the laws of their 
countries, to take action in the courts or before the administrative authorities, with 
a view to the repression of the acts referred to in Articles 9, 10, and 10bis, in so far 
as the law of the country in which protection is claimed allows such action by federa-
tions and associations of that country.

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PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY of 20 March 1883

Article 11
Inventions, Utility Models, Industrial Designs, Marks: Temporary Protection at 
Certain International Exhibitions

(1)  The  countries  of  the  Union  shall,  in  conformity  with  their  domestic  legisla-
tion, grant temporary protection to patentable inventions, utility models, industrial 
designs, and trademarks, in respect of goods exhibited at official or officially recog-
nized international exhibitions held in the territory of any of them.

(2)  Such temporary protection shall not extend the periods provided by Article 4. If, 
later, the right of priority is invoked, the authorities of any country may provide that 
the period shall start from the date of introduction of the goods into the exhibition.

(3)  Each country may require, as proof of the identity of the article exhibited and of 
the date of its introduction, such documentary evidence as it considers necessary.

349

Agreement on Trade-Related Aspects of Intellectual 
Property Rights of 15 April 1994

International Treaties351

AGREEMENT ON TRADE-RELATED ASPECTS OF 
INTELLECTUAL PROPERTY RIGHTS of 15 April 1994 
as amended on 23 January 2017 
- Excerpts -

PART I 
GENERAL PROVISIONS AND BASIC PRINCIPLES

Article 1
Nature and Scope of Obligations

1.  Members shall give effect to the provisions of this Agreement. Members may, 
but shall not be obliged to, implement in their law more extensive protection than is 
required by this Agreement, provided that such protection does not contravene the 
provisions of this Agreement. Members shall be free to determine the appropriate 
method  of  implementing  the  provisions  of  this  Agreement  within  their  own  legal 
system and practice.

2. 
For the purposes of this Agreement, the term “intellectual property” refers to 
all categories of intellectual property that are the subject of Sections 1 through 7 of 
Part II.

3.  Members  shall  accord  the  treatment  provided  for  in  this  Agreement  to  the 
nationals of other Members. In respect of the relevant intellectual property right, the 
nationals of other Members shall be understood as those natural or legal persons 
that would meet the criteria for eligibility for protection provided for in the Paris Con-
vention (1967), the Berne Convention (1971), the Rome Convention and the Treaty 
on Intellectual Property in Respect of Integrated Circuits, were all Members of the 
WTO members of those conventions. Any Member availing itself of the possibilities 
provided in paragraph 3 of Article 5 or paragraph 2 of Article 6 of the Rome Conven-
tion shall make a notification as foreseen in those provisions to the Council for Trade-
Related Aspects of Intellectual Property Rights (the “Council for TRIPS”). 

Article 2
Intellectual Property Conventions

In respect of Parts II, III and IV of this Agreement, Members shall comply with 

1. 
Articles 1 through 12, and Article 19, of the Paris Convention (1967).

2.  Nothing in Parts I to IV of this Agreement shall derogate from existing obliga-
tions that Members may have to each other under the Paris Convention, the Berne 

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AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS 

Convention, the Rome Convention and the Treaty on Intellectual Property in Respect 
of Integrated Circuits.

Article 3
National Treatment

Each Member shall accord to the nationals of other Members treatment no less 
1. 
favourable than that it accords to its own nationals with regard to the protection of 
intellectual property, subject to the exceptions already provided in, respectively, the 
Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the 
Treaty on Intellectual Property in Respect of Integrated Circuits. In respect of per-
formers, producers of phonograms and broadcasting organizations, this obligation 
only  applies  in  respect  of  the  rights  provided  under  this  Agreement.  Any  Member 
availing itself of the possibilities provided in Article 6 of the Berne Convention (1971) 
or paragraph 1(b) of Article 16 of the Rome Convention shall make a notification as 
foreseen in those provisions to the Council for TRIPS.

2.  Members may avail themselves of the exceptions permitted under paragraph 1 
in relation to judicial and administrative procedures, including the designation of an 
address for service or the appointment of an agent within the jurisdiction of a Mem-
ber, only where such exceptions are necessary to secure compliance with laws and 
regulations  which  are  not  inconsistent  with  the  provisions  of  this  Agreement  and 
where such practices are not applied in a manner which would constitute a disguised 
restriction on trade.

Article 4
Most-Favoured-Nation Treatment

With regard to the protection of intellectual property, any advantage, favour, privi-
lege or immunity granted by a Member to the nationals of any other country shall 
be accorded immediately and unconditionally to the nationals of all other Members. 
Exempted  from  this  obligation  are  any  advantage,  favour,  privilege  or  immunity 
accorded by a Member:

(a)  deriving from international agreements on judicial assistance or law enforce-
ment of a general nature and not particularly confined to the protection of intellec-
tual property;

(b)  granted in accordance with the provisions of the Berne Convention (1971)  o r 
the Rome Convention authorizing that the treatment accorded be a function not of 
national treatment but of the treatment accorded in another country;

in respect of the rights of performers, producers of phonograms and broadcast-

(c) 
ing organizations not provided under this Agreement;

353

(d)  deriving from international agreements related to the protection of intellectual 
property  which  entered  into  force  prior  to  the  entry  into  force  of  the  WTO  Agree-
ment, provided that such agreements are notified to the Council for TRIPS and do 
not constitute an arbitrary or unjustifiable discrimination against nationals of other 
Members.

Article 5
Multilateral Agreements on Acquisition or Maintenance of Protection

The obligations under Articles 3 and 4 do not apply to procedures provided in multi-
lateral agreements concluded under the auspices of WIPO relating to the acquisition 
or maintenance of intellectual property rights.

Article 6
Exhaustion

For the purposes of dispute settlement under this Agreement, subject to the provi-
sions of Articles 3 and 4 nothing in this Agreement shall be used to address the issue 
of the exhaustion of intellectual property rights.

SECTION 2:  
TRADEMARKS

Article 15
Protectable Subject Matter

1.  Any sign, or any combination of signs, capable of distinguishing the goods or 
services of one undertaking from those of other undertakings, shall be capable of 
constituting a trademark. Such signs, in particular words including personal names, 
letters,  numerals,  figurative  elements  and  combinations  of  colours  as  well  as  any 
combination  of  such  signs,  shall  be  eligible  for  registration  as  trademarks.  Where 
signs  are  not  inherently  capable  of  distinguishing  the  relevant  goods  or  services, 
Members may make registrability depend on distinctiveness acquired through use. 
Members may require, as a condition of registration, that signs be visually perceptible.

2. 
Paragraph 1 shall not be understood to prevent a Member from denying regis-
tration of a trademark on other grounds, provided that they do not derogate from the 
provisions of the Paris Convention (1967).

3.  Members  may  make  registrability  depend  on  use.  However,  actual  use  of 
a  trademark  shall  not  be  a  condition  for  filing  an  application  for  registration.  An 
application shall not be refused solely on the ground that intended use has not taken 
place before the expiry of a period of three years from the date of application.

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AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS 

The nature of the goods or services to which a trademark is to be applied shall 

4. 
in no case form an obstacle to registration of the trademark.

5.  Members shall publish each trademark either before it is registered or promptly 
after it is registered and shall afford a reasonable opportunity for petitions to cancel 
the registration. In addition, Members may afford an opportunity for the registration 
of a trademark to be opposed.

Article 16
Rights Conferred

1. 
The owner of a registered trademark shall have the exclusive right to prevent 
all  third  parties  not  having  the  owner’s  consent  from  using  in  the  course  of  trade 
identical or similar signs for goods or services which are identical or similar to those 
in respect of which the trademark is registered where such use would result in a like-
lihood of confusion. In case of the use of an identical sign for identical goods or ser-
vices, a likelihood of confusion shall be presumed. The rights described above shall 
not prejudice any existing prior rights, nor shall they affect the possibility of Members 
making rights available on the basis of use.

2.  Article  6bis  of  the  Paris  Convention  (1967)  shall  apply,  mutatis  mutandis,  to 
services.  In  determining  whether  a  trademark  is  well-known,  Members  shall  take 
account  of  the  knowledge  of  the  trademark  in  the  relevant  sector  of  the  public, 
including knowledge in the Member concerned which has been obtained as a result 
of the promotion of the trademark.

3.  Article  6bis  of  the  Paris  Convention  (1967)  shall  apply,  mutatis  mutandis,  to 
goods or services which are not similar to those in respect of which a trademark is 
registered, provided that use of that trademark in relation to those goods or services 
would indicate a connection between those goods or services and the owner of the 
registered trademark and provided that the interests of the owner of the registered 
trademark are likely to be damaged by such use.

Article 17
Exceptions

Members  may  provide  limited  exceptions  to  the  rights  conferred  by  a  trademark, 
such as fair use of descriptive terms, provided that such exceptions take account of 
the legitimate interests of the owner of the trademark and of third parties.

355

Article 18
Term of Protection

Initial  registration,  and  each  renewal  of  registration,  of  a  trademark  shall  be  for 
a term of no less than seven years. The registration of a trademark shall be renew-
able indefinitely.

Article 19
Requirement of Use

If use is required to maintain a registration, the registration may be cancelled 
1. 
only after an uninterrupted period of at least three years of non-use, unless valid 
reasons based on the existence of obstacles to such use are shown by the trademark 
owner. Circumstances arising independently of the will of the owner of the trademark 
which constitute an obstacle to the use of the trademark, such as import restrictions 
on or other government requirements for goods or services protected by the trade-
mark, shall be recognized as valid reasons for non-use.

2. 
  When subject to the control of its owner, use of a trademark by another per-
son shall be recognized as use of the trademark for the purpose of maintaining the 
registration.

Article 20
Other Requirements

The use of a trademark in the course of trade shall not be unjustifiably encumbered 
by special requirements, such as use with another trademark, use in a special form 
or use in a manner detrimental to its capability to distinguish the goods or services of 
one undertaking from those of other undertakings. This will not preclude a require-
ment prescribing the use of the trademark identifying the undertaking producing the 
goods or services along with, but without linking it to, the trademark distinguishing 
the specific goods or services in question of that undertaking.

Article 21
Licensing and Assignment

Members may determine conditions on the licensing and assignment of trademarks, 
it being understood that the compulsory licensing of trademarks shall not be per-
mitted and that the owner of a registered trademark shall have the right to assign 
the trademark with or without the transfer of the business to which the trademark 
belongs.

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AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS 

SECTION 3:  
GEOGRAPHICAL INDICATIONS

Article 22
Protection of Geographical Indications

1.  Geographical  indications  are,  for  the  purposes  of  this  Agreement,  indications 
which identify a good as originating in the territory of a Member, or a region or local-
ity in that territory, where a given quality, reputation or other characteristic of the 
good is essentially attributable to its geographical origin.

In respect of geographical indications, Members shall provide the legal means 

2. 
for interested parties to prevent:

the use of any means in the designation or presentation of a good that indicates 
(a) 
or suggests that the good in question originates in a geographical area other than 
the true place of origin in a manner which misleads the public as to the geographical 
origin of the good;

(b)  any use which constitutes an act of unfair competition within the meaning of 
Article 10bis of the Paris Convention (1967).

3.  A Member shall, ex officio if its legislation so permits or at the request of an 
interested party, refuse or invalidate the registration of a trademark which contains 
or consists of a geographical indication with respect to goods not originating in the 
territory indicated, if use of the indication in the trademark for such goods in that 
Member is of such a nature as to mislead the public as to the true place of origin.

4. 
The protection under paragraphs 1, 2 and 3 shall be applicable against a geo-
graphical indication which, although literally true as to the territory, region or locality 
in which the goods originate, falsely represents to the public that the goods originate 
in another territory.

Article 23
Additional Protection for Geographical Indications for Wines and Spirits

Each Member shall provide the legal means for interested parties to prevent use 
1. 
of a geographical indication identifying wines for wines not originating in the place 
indicated by the geographical indication in question or identifying spirits for spirits 
not originating in the place indicated by the geographical indication in question, even 
where the true origin of the goods is indicated or the geographical indication is used 
in translation or accompanied by expressions such as “kind”, “type”, “style”, “imitation” 
or the like.

357

2. 
The registration of a trademark for wines which contains or consists of a geo-
graphical  indication  identifying  wines  or  for  spirits  which  contains  or  consists  of 
a geographical indication identifying spirits shall be refused or invalidated, ex officio 
if a Member’s legislation so permits or at the request of an interested party, with 
respect to such wines or spirits not having this origin.

In the case of homonymous geographical indications for wines, protection shall 
3. 
be accorded to each indication, subject to the provisions of paragraph 4 of Article 22. 
Each Member shall determine the practical conditions under which the homonymous 
indications in question will be differentiated from each other, taking into account the 
need to ensure equitable treatment of the producers concerned and that consumers 
are not misled.

4. 
In order to facilitate the protection of geographical indications for wines, nego-
tiations shall be undertaken in the Council for TRIPS concerning the establishment of 
a multilateral system of notification and registration of geographical indications for 
wines eligible for protection in those Members participating in the system.

Article 24
International Negotiations; Exceptions

1.  Members agree to enter into negotiations aimed at increasing the protection of 
individual geographical indications under Article 23. The provisions of paragraphs 4 
through 8 below shall not be used by a Member to refuse to conduct negotiations or 
to conclude bilateral or multilateral agreements. In the context of such negotiations, 
Members shall be willing to consider the continued applicability of these provisions to 
individual geographical indications whose use was the subject of such negotiations.

The Council for TRIPS shall keep under review the application of the provisions 
2. 
of this Section; the first such review shall take place within two years of the entry 
into force of the WTO Agreement. Any matter affecting the compliance with the obli-
gations under these provisions may be drawn to the attention of the Council, which, 
at the request of a Member, shall consult with any Member or Members in respect of 
such matter in respect of which it has not been possible to find a satisfactory solu-
tion through bilateral or plurilateral consultations between the Members concerned. 
The Council shall take such action as may be agreed to facilitate the operation and 
further the objectives of this Section.

3. 
In  implementing  this  Section,  a  Member  shall  not  diminish  the  protection  of 
geographical indications that existed in that Member immediately prior to the date 
of entry into force of the WTO Agreement.

4.  Nothing in this Section shall require a Member to prevent continued and similar 
use of a particular geographical indication of another Member identifying wines or 

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AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS 

spirits in connection with goods or services by any of its nationals or domiciliaries 
who have used that geographical indication in a continuous manner with regard to 
the same or related goods or services in the territory of that Member either (a) for at 
least 10 years preceding 15 April 1994 or (b) in good faith preceding that date.

5.  Where a trademark has been applied for or registered in good faith, or where 
rights to a trademark have been acquired through use in good faith either:

(a)  before the date of application of these provisions in that Member as defined in 
Part VI; or

(b)  before the geographical indication is protected in its country of origin; measures 
adopted to implement this Section shall not prejudice eligibility for or the validity of 
the registration of a trademark, or the right to use a trademark, on the basis that 
such a trademark is identical with, or similar to, a geographical indication.

6.  Nothing in this Section shall require a Member to apply its provisions in respect 
of a geographical indication of any other Member with respect to goods or services 
for  which  the  relevant  indication  is  identical  with  the  term  customary  in  common 
language as the common name for such goods or services in the territory of that 
Member.  Nothing  in  this  Section  shall  require  a  Member  to  apply  its  provisions  in 
respect of a geographical indication of any other Member with respect to products 
of the vine for which the relevant indication is identical with the customary name of 
a grape variety existing in the territory of that Member as of the date of entry into 
force of the WTO Agreement.

7. 
A Member may provide that any request made under this Section in connection 
with the use or registration of a trademark must be presented within five years after 
the  adverse  use  of  the  protected  indication  has  become  generally  known  in  that 
Member or after the date of registration of the trademark in that Member provided 
that the trademark has been published by that date, if such date is earlier than the 
date on which the adverse use became generally known in that Member, provided 
that the geographical indication is not used or registered in bad faith.

8. 
The provisions of this Section shall in no way prejudice the right of any person 
to use, in the course of trade, that person’s name or the name of that person’s prede-
cessor in business, except where such name is used in such a manner as to mislead 
the public.

9. 
There shall be no obligation under this Agreement to protect geographical indi-
cations which are not or cease to be protected in their country of origin, or which have 
fallen into disuse in that country.

359

Protocol adopted at Madrid on 27 June 1989 
relating to the Madrid Agreement 
concerning the international registration of marks

International Treaties361

PROTOCOL RELATING TO THE MADRID AGREEMENT 
CONCERNING THE INTERNATIONAL REGISTRATION OF 
MARKS adopted at Madrid on June 27, 1989, 
as amended on October 3, 2006, 
and on November 12, 2007

Article 1
Membership in the Madrid Union

The States party to this Protocol (hereinafter referred to as “the Contracting States”), 
even where they are not party to the Madrid Agreement Concerning the International 
Registration  of  Marks  as  revised  at  Stockholm  in  1967  and  as  amended  in  1979 
(hereinafter  referred  to  as  “the  Madrid  (Stockholm)  Agreement”),  and  the  organi-
zations  referred  to  in  Article  14(1)(b)  which  are  party  to  this  Protocol  (hereinafter 
referred to as “the Contracting Organizations”) shall be members of the same Union 
of  which  countries  party  to  the  Madrid  (Stockholm)  Agreement  are  members.  Any 
reference in this Protocol to “Contracting Parties” shall be construed as a reference 
to both Contracting States and Contracting Organizations.

Article 2
Securing Protection through International Registration

(1)  Where  an  application  for  the  registration  of  a  mark  has  been  filed  with  the 
Office of a Contracting Party, or where a mark has been registered in the register of 
the Office of a Contracting Party, the person in whose name that application (herein-
after referred to as “the basic application”) or that registration (hereinafter referred 
to as “the basic registration”) stands may, subject to the provisions of this Protocol, 
secure protection for his mark in the territory of the Contracting Parties, by obtaining 
the registration of that mark in the register of the International Bureau of the World 
Intellectual Property Organization (hereinafter referred to as “the international reg-
istration,” “the International Register,” “the International Bureau” and “the Organiza-
tion,” respectively), provided that,

(i)  where the basic application has been filed with the Office of a Contracting 
State or where the basic registration has been made by such an Office, the 
person in whose name that application or registration stands is a national 
of that Contracting State, or is domiciled, or has a real and effective indus-
trial or commercial establishment, in the said Contracting State,

(ii)  where the basic application has been filed with the Office of a Contracting 
Organization  or  where  the  basic  registration  has  been  made  by  such  an 

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PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS 

Office, the person in whose name that application or registration stands is 
a national of a State member of that Contracting Organization, or is domi-
ciled, or has a real and effective industrial or commercial establishment, in 
the territory of the said Contracting Organization.

(2) The application for international registration (hereinafter referred to as “the inter-
shall be filed with the International Bureau through the 
national application”) 
intermediary of the Office with which the basic application was filed or by which the 
basic registration was made (hereinafter referred to as “the Office of origin”), as the 
case may be.

(3)  Any reference in this Protocol to an “Office” or an “Office of a Contracting Party” 
shall be construed as a reference to the office that is in charge, on behalf of a Con-
tracting  Party,  of  the  registration  of  marks,  and  any  reference  in  this  Protocol  to 
“marks” shall be construed as a reference to trademarks and service marks.

(4)  For  the  purposes  of  this  Protocol,  “territory  of  a  Contracting  Party”  means, 
where  the  Contracting  Party  is  a  State,  the  territory  of  that  State  and,  where  the 
Contracting  Party  is  an  intergovernmental  organization,  the  territory  in  which  the 
constituting treaty of that intergovernmental organization applies.

Article 3
International Application

(1)  Every  international  application  under  this  Protocol  shall  be  presented  on  the 
form prescribed by the Regulations. The Office of origin shall certify that the particu-
lars appearing in the international application correspond to the particulars appear-
ing, at the time of the certification, in the basic application or basic registration, as 
the case may be. Furthermore, the said Office shall indicate,

(i) 

in the case of a basic application, the date and number of that application,

(ii) 

in the case of a basic registration, the date and number of that registration 
as well as the date and number of the application from which the basic 
registration resulted.

The Office of origin shall also indicate the date of the international application.

(2)  The applicant must indicate the goods and services in respect of which protec-
tion of the mark is claimed and also, if possible, the corresponding class or classes 
according  to  the  classification  established  by  the  Nice  Agreement  Concerning  the 
International Classification of Goods and Services for the Purposes of the Registra-
tion of Marks. If the applicant does not give such indication, the International Bureau 
shall classify the goods and services in the appropriate classes of the said classi-

363

fication. The indication of classes given by the applicant shall be subject to control 
by the International Bureau, which shall exercise the said control in association with 
the Office of origin. In the event of disagreement between the said Office and the 
International Bureau, the opinion of the latter shall prevail.

If  the  applicant  claims  color  as  a  distinctive  feature  of  his  mark,  he  shall  be 

(3) 
required

(i) 

to state the fact, and to file with his international application a notice spec-
ifying the color or the combination of colors claimed;

(ii) 

to append to his international application copies in color of the said mark, 
which  shall  be  attached  to  the  notifications  given  by  the  International 
Bureau; the number of such copies shall be fixed by the Regulations.

(4)  The International Bureau shall register immediately the marks filed in accord-
ance with Article 2. The international registration shall bear the date on which the 
international application was received in the Office of origin, provided that the inter-
national application has been received by the International Bureau within a period 
of two months from that date. If the international application has not been received 
within  that  period,  the  international  registration  shall  bear  the  date  on  which  the 
said international application was received by the International Bureau. The Interna-
tional Bureau shall notify the international registration without delay to the Offices 
concerned. Marks registered in the International Register shall be published in a peri-
odical  gazette  issued  by  the  International  Bureau,  on  the  basis  of  the  particulars 
contained in the international application.

(5)  With a view to the publicity to be given to marks registered in the International 
Register, each Office shall receive from the International Bureau a number of copies 
of the said gazette free of charge and a number of copies at a reduced price, under 
the conditions fixed by the Assembly referred to in Article 10 (hereinafter referred to 
as “the Assembly”). Such publicity shall be deemed to be sufficient for the purposes 
of all the Contracting Parties, and no other publicity may be required of the holder of 
the international registration.

Article 3bis
Territorial Effect

The protection resulting from the international registration shall extend to any Con-
tracting Party only at the request of the person who files the international application 
or who is the holder of the international registration. However, no such request can 
be made with respect to the Contracting Party whose Office is the Office of origin.

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PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS 

Article 3ter
Request for “Territorial Extension”

(1)  Any request for extension of the protection resulting from the international reg-
istration to any Contracting Party shall be specially mentioned in the international 
application.

(2)  A request for territorial extension may also be made subsequently to the inter-
national registration. Any such request shall be presented on the form prescribed by 
the Regulations. It shall be immediately recorded by the International Bureau, which 
shall  notify  such  recordal  without  delay  to  the  Office  or  Offices  concerned.  Such 
recordal shall be published in the periodical gazette of the International Bureau. Such 
territorial extension shall be effective from the date on which it has been recorded in 
the International Register; it shall cease to be valid on the expiry of the international 
registration to which it relates.

Article 4
Effects of International Registration

(1)

(a)  From the date of the registration or recordal effected in accordance with the 
provisions of Articles 3 and 3ter, the protection of the mark in each of the Contracting 
Parties concerned shall be the same as if the mark had been deposited direct with 
the Office of that Contracting Party. If no refusal has been notified to the Interna-
tional Bureau in accordance with Article 5(1) and (2) or if a refusal notified in accord-
ance with the said Article has been withdrawn subsequently, the protection of the 
mark in the Contracting Party concerned shall, as from the said date, be the same as 
if the mark had been registered by the Office of that Contracting Party.

(b)  The indication of classes of goods and services provided for in Article 3 shall 
not bind the Contracting Parties with regard to the determination of the scope of the 
protection of the mark.

(2)  Every international registration shall enjoy the right of priority provided for by 
Article 4 of the Paris Convention for the Protection of Industrial Property, without it 
being necessary to comply with the formalities prescribed in Section D of that Article.

Article 4bis
Replacement of a National or Regional Registration by an International 
Registration

(1)  Where a mark that is the subject of a national or regional registration in the 
Office of a Contracting Party is also the subject of an international registration and 

365

both registrations stand in the name of the same person, the international registra-
tion is deemed to replace the national or regional registration, without prejudice to 
any rights acquired by virtue of the latter, provided that

(i) 

the protection resulting from the international registration extends to the 
said Contracting Party under Article 3ter (1) or (2),

(ii)  all the goods and services listed in the national or regional registration are 
also listed in the international registration in respect of the said Contract-
ing Party,

(iii)  such  extension  takes  effect  after  the  date  of  the  national  or  regional 

registration.

(2) The Office referred to in paragraph (1) 
note in its register of the international registration.

shall, upon request, be required to take 

Article 5
Refusal and Invalidation of Effects of International Registration in Respect of 
Certain Contracting Parties

(1)  Where the applicable legislation so authorizes, any Office of a Contracting Party 
which  has  been  notified  by  the  International  Bureau  of  an  extension  to  that  Con-
tracting Party, under Article 3ter(1) or (2), of the protection resulting from the inter-
national registration shall have the right to declare in a notification of refusal that 
protection cannot be granted in the said Contracting Party to the mark which is the 
subject of such extension. Any such refusal can be based only on the grounds which 
would apply, under the Paris Convention for the Protection of Industrial Property, in 
the case of a mark deposited direct with the Office which notifies the refusal. How-
ever, protection may not be refused, even partially, by reason only that the applicable 
legislation would permit registration only in a limited number of classes or for a lim-
ited number of goods or services.

(2)

(a)  Any Office wishing to exercise such right shall notify its refusal to the Interna-
tional Bureau, together with a statement of all grounds, within the period prescribed 
by the law applicable to that Office and at the latest, subject to subparagraphs (b) 
and (c), before the expiry of one year from the date on which the notification of the 
extension referred to in paragraph (1) has been sent to that Office by the Interna-
tional Bureau.

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PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS 

(b)  Notwithstanding  subparagraph  (a),  any  Contracting  Party  may  declare  that, 
for international registrations made under this Protocol, the time limit of one year 
referred to in subparagraph (a) is replaced by 18 months.

(c)  Such declaration may also specify that, when a refusal of protection may result 
from an opposition to the granting of protection, such refusal may be notified by the 
Office of the said Contracting Party to the International Bureau after the expiry of 
the 18-month time limit. Such an Office may, with respect to any given international 
registration,  notify  a  refusal  of  protection  after  the  expiry  of  the  18-month  time 
limit, but only if

(i) 

(ii) 

it has, before the expiry of the 18-month time limit, informed the Inter-
national Bureau of the possibility that oppositions may be filed after the 
expiry of the 18-month time limit, and

the notification of the refusal based on an opposition is made within a time 
limit  of  one  month  from  the  expiry  of  the  opposition  period  and,  in  any 
case, not later than seven months from the date on which the opposition 
period begins.

(d)  Any  declaration  under  subparagraphs  (b)  or  (c)  may  be  made  in  the  instru-
ments referred to in Article 14(2), and the effective date of the declaration shall be 
the same as the date of entry into force of this Protocol with respect to the State 
or intergovernmental organization having made the declaration. Any such declara-
tion may also be made later, in which case the declaration shall have effect three 
months after its receipt by the Director General of the Organization (hereinafter 
referred to as “the Director General”), or at any later date indicated in the declara-
tion, in respect of any international registration whose date is the same as or is 
later than the effective date of the declaration.

(e)  Upon the expiry of a period of ten years from the entry into force of this Pro-
tocol, the Assembly shall examine the operation of the system established by sub-
paragraphs (a) to (d). Thereafter, the provisions of the said subparagraphs may be 
modified by a unanimous decision of the Assembly.59

(3)  The International Bureau shall, without delay, transmit one of the copies of the 
notification of refusal to the holder of the international registration. The said holder 
shall have the same remedies as if the mark had been deposited by him direct with 
the Office which has notified its refusal. Where the International Bureau has received 

59 

Interpretative statement adopted by the Assembly of the Madrid Union: “Article 5(2)(e) of the Protocol is 
understood  as  allowing  the  Assembly  to  keep  under  review  the  operation  of  the  system  established  by 
subparagraphs (a) to (d), it being also understood that any modification of those provisions shall require 
a unanimous decision of the Assembly.”

367

information under paragraph (2)(c)(i), it shall, without delay, transmit the said infor-
mation to the holder of the international registration.

(4)  The  grounds  for  refusing  a  mark  shall  be  communicated  by  the  International 
Bureau to any interested party who may so request.

(5) Any Office which has not notified, with respect to a given international registra-
tion, any provisional or final refusal to the International Bureau in accordance with 
paragraphs (1) and (2) 
shall, with respect to that international registration, lose 
the benefit of the right provided for in paragraph (1).

(6) 
Invalidation, by the competent authorities of a Contracting Party, of the effects, 
in  the  territory  of  that  Contracting  Party,  of  an  international  registration  may  not 
be pronounced without the holder of such international registration having, in good 
time,  been  afforded  the  opportunity  of  defending  his  rights.  Invalidation  shall  be 
notified to the International Bureau.

Article 5bis
Documentary Evidence of Legitimacy of Use of Certain Elements of the Mark

Documentary evidence of the legitimacy of the use of certain elements incorporated 
in a mark, such as armorial bearings, escutcheons, portraits, honorary distinctions, 
titles, trade names, names of persons other than the name of the applicant, or other 
like inscriptions, which might be required by the Offices of the Contracting Parties 
shall be exempt from any legalization as well as from any certification other than 
that of the Office of origin.

Article 5ter
Copies of Entries in International Register; Searches for Anticipations; Extracts 
from International Register

(1)  The International Bureau shall issue to any person applying therefor, upon the 
payment of a fee fixed by the Regulations, a copy of the entries in the International 
Register concerning a specific mark.

(2)  The  International  Bureau  may  also,  upon  payment,  undertake  searches  for 
anticipations among marks that are the subject of international registrations.

(3)  Extracts from the International Register requested with a view to their produc-
tion in one of the Contracting Parties shall be exempt from any legalization.

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PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS 

Article 6
Period of Validity of International Registration; Dependence and Independence 
of International Registration

(1)  Registration of a mark at the International Bureau is effected for ten years, with 
the possibility of renewal under the conditions specified in Article 7.

(2)  Upon expiry of a period of five years from the date of the international registra-
tion, such registration shall become independent of the basic application or the reg-
istration resulting therefrom, or of the basic registration, as the case may be, subject 
to the following provisions.

(3)  The  protection  resulting  from  the  international  registration,  whether  or  not  it 
has been the subject of a transfer, may no longer be invoked if, before the expiry of 
five years from the date of the international registration, the basic application or the 
registration resulting therefrom, or the basic registration, as the case may be, has 
been withdrawn, has lapsed, has been renounced or has been the subject of a final 
decision of rejection, revocation, cancellation or invalidation, in respect of all or some 
of the goods and services listed in the international registration. The same applies if

(i) 

an appeal against a decision refusing the effects of the basic application,

(ii)  an action requesting the withdrawal of the basic application or the revoca-
tion, cancellation or invalidation of the registration resulting from the basic 
application or of the basic registration, or

(iii)  an opposition to the basic application 

results, after the expiry of the five-year period, in a final decision of rejec-
tion, revocation, cancellation or invalidation, or ordering the withdrawal, of 
the basic application, or the registration resulting therefrom, or the basic 
registration, as the case may be, provided that such appeal, action or oppo-
sition had begun before the expiry of the said period. The same also applies 
if the basic application is withdrawn, or the registration resulting from the 
basic application or the basic registration is renounced, after the expiry of 
the five-year period, provided that, at the time of the withdrawal or renun-
ciation, the said application or registration was the subject of a proceeding 
referred to in (i), (ii) or (iii) and that such proceeding had begun before the 
expiry of the said period.

(4)  The Office of origin shall, as prescribed in the Regulations, notify the Interna-
tional Bureau of the facts and decisions relevant under paragraph (3), and the Inter-
national Bureau shall, as prescribed in the Regulations, notify the interested parties 
and effect any publication accordingly. The Office of origin shall, where applicable, 

 
369

request the International Bureau to cancel, to the extent applicable, the international 
registration, and the International Bureau shall proceed accordingly.

Article 7
Renewal of International Registration

(1)  Any international registration may be renewed for a period of ten years from 
the expiry of the preceding period, by the mere payment of the basic fee and, sub-
ject to Article 8(7), of the supplementary and complementary fees provided for in 
Article 8(2).

(2)  Renewal may not bring about any change in the international registration in its 
latest form.

(3)  Six months before the expiry of the term of protection, the International Bureau 
shall, by sending an unofficial notice, remind the holder of the international registra-
tion and his representative, if any, of the exact date of expiry.

(4)  Subject  to  the  payment  of  a  surcharge  fixed  by  the  Regulations,  a  period  of 
grace of six months shall be allowed for renewal of the international registration.

Article 8
Fees for International Application and Registration

(1)  The Office of origin may fix, at its own discretion, and collect, for its own ben-
efit, a fee which it may require from the applicant for international registration or 
from the holder of the international registration in connection with the filing of the 
international application or the renewal of the international registration.

(2)  Registration  of  a  mark  at  the  International  Bureau  shall  be  subject  to  the 
advance  payment  of  an  international  fee  which  shall,  subject  to  the  provisions  of 
paragraph (7)(a), include,

(i) 

a basic fee;

(ii)  a  supplementary  fee  for  each  class  of  the  International  Classification, 
beyond three, into which the goods or services to which the mark is applied 
will fall;

(iii)  a  complementary  fee  for  any  request  for  extension  of  protection  under 

Article 3ter.

(3)  However, the supplementary fee specified in paragraph (2)(ii) 
may,  with-
out prejudice to the date of the international registration, be paid within the period 

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PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS 

fixed by the Regulations if the number of classes of goods or services has been fixed 
or disputed by the International Bureau. If, upon expiry of the said period, the supple-
mentary fee has not been paid or the list of goods or services has not been reduced 
to the required extent by the applicant, the international application shall be deemed 
to have been abandoned.

(4)  The annual product of the various receipts from international registration, with 
the exception of the receipts derived from the fees mentioned in paragraph (2) (ii) 
and (iii), shall be divided equally among the Contracting Parties by the International 
Bureau, after deduction of the expenses and charges necessitated by the implemen-
tation of this Protocol.

(5)  The amounts derived from the supplementary fees provided for in paragraph (2)
(ii) shall be divided, at the expiry of each year, among the interested Contracting Par-
ties in proportion to the number of marks for which protection has been applied for in 
each of them during that year, this number being multiplied, in the case of Contract-
ing Parties which make an examination, by a coefficient which shall be determined 
by the Regulations.

(6)  The  amounts  derived  from  the  complementary  fees  provided  for  in  para-
graph (2)(iii) shall be divided according to the same rules as those provided for in 
paragraph (5).

(7) 

(a)  Any Contracting Party may declare that, in connection with each international 
registration in which it is mentioned under Article 3ter, and in connection with the 
renewal of any such international registration, it wants to receive, instead of a share 
in the revenue produced by the supplementary and complementary fees, a fee (here-
inafter referred to as “the individual fee”) whose amount shall be indicated in the 
declaration, and can be changed in further declarations, but may not be higher than 
the  equivalent  of  the  amount  which  the  said  Contracting  Party’s  Office  would  be 
entitled to receive from an applicant for a ten-year registration, or from the holder of 
a registration for a ten-year renewal of that registration, of the mark in the register 
of the said Office, the said amount being diminished by the savings resulting from 
the international procedure. Where such an individual fee is payable,

(i) 

no supplementary fees referred to in paragraph (2)(ii) shall be payable if 
only  Contracting  Parties  which  have  made  a  declaration  under  this  sub-
paragraph are mentioned under Article 3ter, and

(ii)  no complementary fee referred to in paragraph (2) (iii) shall be payable in 
respect of any Contracting Party which has made a declaration under this 
subparagraph.

371

(b)  Any  declaration  under  subparagraph  (a)  may  be  made  in  the  instruments 
referred  to  in  Article  14(2),  and  the  effective  date  of  the  declaration  shall  be  the 
same  as  the  date  of  entry  into  force  of  this  Protocol  with  respect  to  the  State  or 
intergovernmental organization having made the declaration. Any such declaration 
may also be made later, in which case the declaration shall have effect three months 
after its receipt by the Director General, or at any later date indicated in the declara-
tion, in respect of any international registration whose date is the same as or is later 
than the effective date of the declaration.

Article 9
Recordal of Change in the Ownership of an International Registration

At the request of the person in whose name the international registration stands, or 
at the request of an interested Office made ex officio or at the request of an inter-
ested person, the International Bureau shall record in the International Register any 
change in the ownership of that registration, in respect of all or some of the Con-
tracting Parties in whose territories the said registration has effect and in respect of 
all or some of the goods and services listed in the registration, provided that the new 
holder is a person who, under Article 2(1), is entitled to file international applications.

Article 9bis
Recordal of Certain Matters Concerning an International Registration

The International Bureau shall record in the International Register

(i) 

any  change  in  the  name  or  address  of  the  holder  of  the  international 
registration,

(ii) 

the appointment of a representative of the holder of the international reg-
istration and any other relevant fact concerning such representative,

(iii)  any limitation, in respect of all or some of the Contracting Parties, of the 

goods and services listed in the international registration,

(iv)  any renunciation, cancellation or invalidation of the international registra-

tion in respect of all or some of the Contracting Parties,

(v)  any other relevant fact, identified in the Regulations, concerning the rights 

in a mark that is the subject of an international registration.

International Treaties372

PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS 

Article 9ter
Fees for Certain Recordals

Any recordal under Article 9 or under Article 9bis may be subject to the payment of 
a fee.

Article 9quater
Common Office of Several Contracting States

If several Contracting States agree to effect the unification of their domestic 

(1) 
legislation’s on marks, they may notify the Director General

(i) 

that a common Office shall be substituted for the national Office of each 
of them, and

(ii) 

that the whole of their respective territories shall be deemed to be a single 
State for the purposes of the application of all or part of the provisions 
preceding this Article as well as the provisions of Articles 9quinquies and 
9sexies.

(2)  Such notification shall not take effect until three months after the date of the 
communication thereof by the Director General to the other Contracting Parties.

Article 9quinquies
Transformation of an International Registration into National or Regional 
Applications

Where,  in  the  event  that  the  international  registration  is  cancelled  at  the  request 
of the Office of origin under Article 6(4), in respect of all or some of the goods and 
services listed in the said registration, the person who was the holder of the inter-
national registration files an application for the registration of the same mark with 
the Office of any of the Contracting Parties in the territory of which the international 
registration had effect, that application shall be treated as if it had been filed on 
the date of the international registration according to Article 3(4) or on the date of 
recordal of the territorial extension according to Article 3ter(2) and, if the interna-
tional registration enjoyed priority, shall enjoy the same priority, provided that

(i) 

such application is filed within three months from the date on which the 
international registration was cancelled,

(ii) 

the goods and services listed in the application are in fact covered by the 
list  of  goods  and  services  contained  in  the  international  registration  in 
respect of the Contracting Party concerned, and

373

(iii)  such application complies with all the requirements of the applicable law, 

including the requirements concerning fees.

Article 9sexies
Relations Between States Party to both this Protocol and the Madrid 
(Stockholm) Agreement

(1)

(a)  This Protocol alone shall be applicable as regards the mutual relations of States 
party to both this Protocol and the Madrid (Stockholm) Agreement.

(b)  Notwithstanding  subparagraph  (a),  a  declaration  made  under  Article  5(2)(b), 
Article 5(2)(c) or Article 8(7) of this Protocol, by a State party to both this Protocol 
and  the  Madrid  (Stockholm)  Agreement,  shall  have  no  effect  in  the  relations  with 
another State party to both this Protocol and the Madrid (Stockholm) Agreement.

(2)  The Assembly shall, after the expiry of a period of three years from Septem-
ber 1, 2008, review the application of paragraph (1)(b) and may, at any time there-
after, either repeal it or restrict its scope, by a three-fourths majority.  In the vote 
of the Assembly, only those States which are party to both the Madrid (Stockholm) 
Agreement and this Protocol shall have the right to participate.

Article 10
Assembly

(1)

(a)  The Contracting Parties shall be members of the same Assembly as the coun-
tries party to the Madrid (Stockholm) Agreement.

(b)  Each Contracting Party shall be represented in that Assembly by one delegate, 
who may be assisted by alternate delegates, advisors, and experts.

(c)  The expenses of each delegation shall be borne by the Contracting Party which 
has appointed it, except for the travel expenses and the subsistence allowance of one 
delegate for each Contracting Party, which shall be paid from the funds of the Union.

(2)  The Assembly shall, in addition to the functions which it has under the Madrid 
(Stockholm) Agreement, also

(i) 

deal with all matters concerning the implementation of this Protocol;

International Treaties374

PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS 

(ii)  give directions to the International Bureau concerning the preparation for 
conferences  of  revision  of  this  Protocol,  due  account  being  taken  of  any 
comments made by those countries of the Union which are not party to 
this Protocol;

(iii)  adopt and modify the provisions of the Regulations concerning the imple-

mentation of this Protocol;

(iv)  perform such other functions as are appropriate under this Protocol.

(3)

(a)  Each Contracting Party shall have one vote in the Assembly. On matters con-
cerning only countries that are party to the Madrid (Stockholm) Agreement, Contract-
ing Parties that are not party to the said Agreement shall not have the right to vote, 
whereas, on matters concerning only Contracting Parties, only the latter shall have 
the right to vote.

(b)  One-half  of  the  members  of  the  Assembly  which  have  the  right  to  vote  on 
a  given  matter  shall  constitute  the  quorum  for  the  purposes  of  the  vote  on  that 
matter.

(c)  Notwithstanding the provisions of subparagraph (b), if, in any session, the num-
ber  of  the  members  of  the  Assembly  having  the  right  to  vote  on  a  given  matter 
which are represented is less than one-half but equal to or more than one-third of 
the members of the Assembly having the right to vote on that matter, the Assembly 
may make decisions but, with the exception of decisions concerning its own proce-
dure, all such decisions shall take effect only if the conditions set forth hereinafter 
are fulfilled. The International Bureau shall communicate the said decisions to the 
members of the Assembly having the right to vote on the said matter which were not 
represented and shall invite them to express in writing their vote or abstention within 
a period of three months from the date of the communication. If, at the expiry of this 
period, the number of such members having thus expressed their vote or abstention 
attains the number of the members which was lacking for attaining the quorum in 
the session itself, such decisions shall take effect provided that at the same time the 
required majority still obtains.

(d)  Subject to the provisions of Articles 5(2)(e), 9sexies(2), 12 and 13(2), the deci-
sions of the Assembly shall require two-thirds of the votes cast.

(e)  Abstentions shall not be considered as votes.

(f)  A delegate may represent, and vote in the name of, one member of the Assem-
bly only.

375

(4) 
In addition to meeting in ordinary sessions and extraordinary sessions as pro-
vided for by the Madrid (Stockholm) Agreement, the Assembly shall meet in extraor-
dinary session upon convocation by the Director General, at the request of one-fourth 
of the members of the Assembly having the right to vote on the matters proposed to 
be included in the agenda of the session. The agenda of such an extraordinary ses-
sion shall be prepared by the Director General.

Article 11
International Bureau

International  registration  and  related  duties,  as  well  as  all  other  administra-
(1) 
tive tasks, under or concerning this Protocol, shall be performed by the International 
Bureau.

(2) 

(a)  The International Bureau shall, in accordance with the directions of the Assem-
bly, make the preparations for the conferences of revision of this Protocol.

(b)  The International Bureau may consult with intergovernmental and international 
non-governmental  organizations  concerning  preparations  for  such  conferences  of 
revision.

(c)  The Director General and persons designated by him shall take part, without the 
right to vote, in the discussions at such conferences of revision.

(3)  The International Bureau shall carry out any other tasks assigned to it in rela-
tion to this Protocol.

Article 12
Finances

As far as Contracting Parties are concerned, the finances of the Union shall be gov-
erned by the same provisions as those contained in Article 12 of the Madrid (Stock-
holm)  Agreement,  provided  that  any  reference  to  Article  8  of  the  said  Agreement 
shall be deemed to be a reference to Article 8 of this Protocol. Furthermore, for the 
purposes of Article 12(6)(b) of the said Agreement, Contracting Organizations shall, 
subject to a unanimous decision to the contrary by the Assembly, be considered to 
belong to contribution class I (one) under the Paris Convention for the Protection of 
Industrial Property.

International Treaties376

PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS 

Article 13
Amendment of Certain Articles of the Protocol

(1)  Proposals  for  the  amendment  of  Articles  10,  11,  12,  and  the  present  Article, 
may be initiated by any Contracting Party, or by the Director General. Such proposals 
shall be communicated by the Director General to the Contracting Parties at least six 
months in advance of their consideration by the Assembly.

(2)  Amendments to the Articles referred to in paragraph (1) shall be adopted by the 
Assembly. Adoption shall require three-fourths of the votes cast, provided that any 
amendment to Article 10, and to the present paragraph, shall require four-fifths of 
the votes cast.

(3)  Any amendment to the Articles referred to in paragraph (1) shall enter into force 
one  month  after  written  notifications  of  acceptance,  effected  in  accordance  with 
their respective constitutional processes, have been received by the Director General 
from three-fourths of those States and intergovernmental organizations which, at 
the time the amendment was adopted, were members of the Assembly and had the 
right to vote on the amendment. Any amendment to the said Articles thus accepted 
shall bind all the States and intergovernmental organizations which are Contracting 
Parties at the time the amendment enters into force, or which become Contracting 
Parties at a subsequent date.

Article 14
Becoming Party to the Protocol; Entry into Force

(1) 

(a)  Any State that is a party to the Paris Convention for the Protection of Industrial 
Property may become party to this Protocol.

(b)  Furthermore,  any  intergovernmental  organization  may  also  become  party  to 
this Protocol where the following conditions are fulfilled:

(i) 

at least one of the member States of that organization is a party to the 
Paris Convention for the Protection of Industrial Property;

(ii) 

that  organization  has  a  regional  Office  for  the  purposes  of  registering 
marks with effect in the territory of the organization, provided that such 
Office is not the subject of a notification under Article 9quater.

(2)  Any State or organization referred to in paragraph (1) may sign this Protocol. 
Any such State or organization may, if it has signed this Protocol, deposit an instru-

377

ment of ratification, acceptance or approval of this Protocol or, if it has not signed 
this Protocol, deposit an instrument of accession to this Protocol.

(3)  The instruments referred to in paragraph (2) shall be deposited with the Director 
General.

(4) 

(a)  This Protocol shall enter into force three months after four instruments of rati-
fication,  acceptance,  approval  or  accession  have  been  deposited,  provided  that  at 
least one of those instruments has been deposited by a country party to the Madrid 
(Stockholm) Agreement and at least one other of those instruments has been depos-
ited  by  a  State  not  party  to  the  Madrid  (Stockholm)  Agreement  or  by  any  of  the 
organizations referred to in paragraph (1)(b).

(b)  With respect to any other State or organization referred to in paragraph (1), this 
Protocol shall enter into force three months after the date on which its ratification, 
acceptance, approval or accession has been notified by the Director General.

(5)  Any  State  or  organization  referred  to  in  paragraph  (1)  may,  when  depositing 
its instrument of ratification, acceptance or approval of, or accession to, this Proto-
col, declare that the protection resulting from any international registration effected 
under this Protocol before the date of entry into force of this Protocol with respect to 
it cannot be extended to it.

Article 15
Denunciation

(1)  This Protocol shall remain in force without limitation as to time.

(2)  Any Contracting Party may denounce this Protocol by notification addressed to 
the Director General.

(3)  Denunciation shall take effect one year after the day on which the Director Gen-
eral has received the notification.

(4)  The right of denunciation provided for by this Article shall not be exercised by 
any Contracting Party before the expiry of five years from the date upon which this 
Protocol entered into force with respect to that Contracting Party.

(5) 

(a)  Where a mark is the subject of an international registration having effect in the 
denouncing State or intergovernmental organization at the date on which the denun-

International Treaties378

PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS 

ciation becomes effective, the holder of such registration may file an application for 
the registration of the same mark with the Office of the denouncing State or inter-
governmental organization, which shall be treated as if it had been filed on the date 
of the international registration according to Article 3(4) or on the date of recordal of 
the territorial extension according to Article 3ter(2) 
and, if the international regis-
tration enjoyed priority, enjoy the same priority, provided that

(i) 

such  application  is  filed  within  two  years  from  the  date  on  which  the 
denunciation became effective,

(ii) 

the goods and services listed in the application are in fact covered by the 
list  of  goods  and  services  contained  in  the  international  registration  in 
respect of the denouncing State or intergovernmental organization, and

(iii)  such application complies with all the requirements of the applicable law, 

including the requirements concerning fees.

(b)  The provisions of subparagraph (a) shall also apply in respect of any mark that 
is  the  subject  of  an  international  registration  having  effect  in  Contracting  Parties 
other than the denouncing State or intergovernmental organization at the date on 
which denunciation becomes effective and whose holder, because of the denuncia-
tion, is no longer entitled to file international applications under Article 2(1).

Article 16
Signature; Languages; Depository Functions

(1) 

(a)  This Protocol shall be signed in a single copy in the English, French and Span-
ish languages, and shall be deposited with the Director General when it ceases to 
be open for signature at Madrid. The texts in the three languages shall be equally 
authentic.

(b)  Official texts of this Protocol shall be established by the Director General, after 
consultation with the interested governments and organizations, in the Arabic, Chi-
nese,  German,  Italian,  Japanese,  Portuguese  and  Russian  languages,  and  in  such 
other languages as the Assembly may designate.

(2)  This Protocol shall remain open for signature at Madrid until December 31, 1989.

(3)  The Director General shall transmit two copies, certified by the Government of 
Spain, of the signed texts of this Protocol to all States and intergovernmental organi-
zations that may become party to this Protocol.

379

(4)  The  Director  General  shall  register  this  Protocol  with  the  Secretariat  of  the 
United Nations.

(5)  The Director General shall notify all States and international organizations that 
may become or are party to this Protocol of signatures, deposits of instruments of 
ratification, acceptance, approval or accession, the entry into force of this Protocol 
and any amendment thereto, any notification of denunciation and any declaration 
provided for in this Protocol.

International TreatiesDecisions of the 
Executive Director 
of the Office

Decisions of the 

Executive Director 

of the Office

381

TABLE OF CONTENTS

DECISION No EX-19-1 of the Executive Director of the Office of 18 January 
2019 on communication by electronic means 

385

DECISION No EX-17-3 of the Executive Director of 18 September 2017 
concerning the formal requirements of a priority claim for a European 
Union trade mark or a seniority claim for a European Union trade mark or 
a designation of the European Union under the Madrid Protocol (consolidated 
version) 

DECISION No EX-17-7 of the Executive Director of 18 September 2017 
on payment methods of fees and charges and determining the insignificant 
amount of fees and charges (consolidated version) 

DECISION No EX-17-6 of the Executive Director of 22 September 2017 on 
technical specifications for annexes submitted on data carriers (consolidated 
version) 

391

397

408

Decisions of the Executive Director of the Office383

Decisions  
of the Executive Director

Decisions of the Executive Director of the Office385

DECISION No EX-19-1 of the Executive Director of 
the Office of 18 January 2019 on communication by 
electronic means

The Executive Director of the European Union Intellectual Property Office (the Office),

Having regard to Regulation (EU) 2017/1001 of the European Parliament and of the Coun-
cil of 14 June 2017 on the European Union trade mark 60 (EUTMR) and in particular Arti-
cle 157(4)(a) thereof, pursuant to which the Executive Director must take all necessary steps, 
including the adoption of internal administrative instructions and the publication of notices, 
to ensure the functioning of the Office,

Having regard to Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 
supplementing  Regulation  (EU)  2017/1001  of  the  European  Parliament  and  of  the 
Council  on  the  European  Union  trade  mark,  and  repealing  Delegated  Regulation 
(EU) 2017/1430 61,

Having regard to Commission Implementing Regulation (EU) 2018/626 of 5 March 
2018 laying down detailed rules for implementing certain provisions of Regulation 
(EU)  2017/1001  of  the  European  Parliament  and  of  the  Council  on  the  European 
Union trade mark, and repealing Implementing Regulation (EU) 2017/1431 62,

Having regard to Council Regulation (EC) No 6/2002 of 12 December 2001 on Com-
munity designs, as amended 63 (CDR), and in particular Article 100 thereof, concerning 
the supplementary powers of the Executive Director, and to Commission Regulation 
(EC)  No  2245/2002  of  21  October  2002  implementing  the  Council  Regulation,  as 
amended 64, (CDIR),

Having regard to Regulation (EU) 2018/1725 of the European Parliament and of the 
Council of 23 October 2018 on the protection of natural persons with regard to the 
processing  of  personal  data  by  the  Union  institutions,  bodies,  offices  and  agencies 
and on the free movement of such data, and repealing Regulation (EC) No 45/2001 
and Decision No 1247/2002/EC 65,

Whereas:

60  OJ L 154, 16.6.2017, p. 1.
61  OJ L 104, 24.4.2018, p. 1.
62  OJ L 104, 24.4.2018, p. 37.
63  OJ L 386, 29.12.2006, p. 14.
64  OJ L 193, 25.7.2007, p. 13.
65  OJ L 295, 21.11.2018, p. 39-98.

Decisions of the Executive Director of the Office386

DECISION No EX-19-1

(1)  Pursuant to Article 98(3) EUTMR and Article 57 EUTMDR, notifications by the 
Office may be effected by different means, including by electronic means. Notifica-
tion by electronic means covers transmissions by wire, by radio, by optical means or 
by other electromagnetic means, including the internet. The Executive Director will 
determine the details regarding the specific electronic means to be used, the manner 
in which electronic means will be used, and the time limit for notification by elec-
tronic means.

(2)  Pursuant to Article 100(1) EUTMR and Article 63(1)(a) EUTMDR, applications for 
the registration of an EU trade mark as well as any other application provided for in 
the EUTMR and all other communications addressed to the Office may be submitted 
by  transmitting  a  communication  by  electronic  means.  The  Executive  Director  will 
determine to what extent and under which technical conditions those communica-
tions may be submitted electronically.

In all the procedures relating to EU trade marks and Community designs, where 
(3) 
fax is an accepted means of communication, it is pertinent to identify, in the interest 
of legal certainty, the specific fax number(s) to which users must address incoming 
fax correspondence.

(4)  Pursuant to Article 114(5) EUTMR, inspection of the files of EU trade mark appli-
cations and of registered EU trade marks must include technical means of storage if 
the files are stored in this way. The Executive Director will determine the means of 
inspection.

(5)  Pursuant to Article 31(3) EUTMR and Article 3(5) EUTMIR, where the represen-
tation of an EUTM application is provided electronically, the Executive Director will 
determine the formats and size of the electronic file as well as any other relevant 
technical specifications.

(6)  Pursuant to Article 51(2) CDIR, details of notification by technical means other 
than fax will be determined by the Executive Director.

(7)  Pursuant to Article 67(1) and (2) CDIR, applications for registration of a Com-
munity design may be submitted by electronic means, including the representation 
of the design. The conditions for filing applications for registration of a Community 
design by electronic means and the requirements for communication by electronic 
means, such as the equipment to be used, technical details of communication, and 
methods of identifying the sender will be determined by the Executive Director.

(8)  Pursuant  to  Article  74  CDIR,  inspection  of  the  files  of  registered  Community 
designs will include technical means of storage if the files are so stored. The Execu-
tive Director will determine the means of inspection.

387

(9)  Technical details and requirements may undergo frequent changes in order to 
facilitate use of the systems and such changes need not be reflected in this decision, 
but will be made available on the Office’s website in a separate document on condi-
tions of use,

HAS ADOPTED THE FOLLOWING DECISION:

Article 1
Means of electronic communication

(1)  The accepted means of electronic communication with the Office in procedures 
relating to EU trade marks are:

(a)  a  secure  electronic  communications  platform  maintained  by  the  Office  that 
enables users to submit applications and other documents, receive notifications and 
documents sent by the Office, reply to such notifications and perform other actions 
(User Area);

(b) 

fax, subject to the provisions of paragraph 2.

(2)  Fax is not an accepted means of communication for filing applications for the 
registration or renewal of an EU trade mark. Any such application submitted by fax 
will be deemed not to have been received.

(3) 
In procedures relating to the registration of Community designs, the User Area 
is the accepted other technical means of communication with the Office, within the 
meaning of Article 51(2) CDIR.

In all the procedures relating to EU trade marks and Community designs, where 
(4) 
fax is an accepted means of communication, all incoming fax submissions must be 
sent to the official general fax number(s) of the Office. The list of official fax num-
bers  is  attached  in  Annex  1  of  this  decision.  Any  incoming  fax  that  is  addressed 
to a fax number that is not included in Annex 1 will be deemed not to have been 
received.

Article 2
User account

(1)  The User Area can be accessed via a personal account (user account) by regis-
tering on the Office’s website. A user may register for sub-accounts that are depend-
ent on an existing user account.

(2)  The  user  is  responsible  for  the  proper  use  and  maintenance  of  confidentiality  as 
regards their account, passwords and, where appropriate, corresponding sub-accounts, 

Decisions of the Executive Director of the Office388

DECISION No EX-19-1

irrespective of who uses the account or sub-accounts on the user’s behalf. In the event of 
violation of the user’s obligations as described above, the Office is entitled to revoke the 
user’s access rights without prior notice.

(3)  Users  can  request  the  deactivation  of  their  user  account  at  any  time.  The 
account will be deactivated as soon as technically possible.

Article 3
Communication by the Office through the User Area

(1)  The User Area offers the option to receive all communications from the Office 
electronically.  If  the  user  selects  this  option,  the  Office  will  send  all  notifications 
through the User Area, unless this is impossible for technical reasons.

(2)  Users have the option of additionally receiving an alert for each notification sent 
to them through the User Area. The alert serves only to inform the user that a docu-
ment has been placed in their inbox and does not constitute a notification.

(3)  The date on which the document is placed in a user’s inbox will be recorded by 
the Office and mentioned in the User Area.

(4)  Notification will be deemed to have taken place on the fifth calendar day fol-
lowing the day on which the Office placed the document in the user’s inbox.

(5)  The user can change the preferred means of communication with the Office at 
any time. However, any change in the status will be applicable only as soon as techni-
cally feasible.

Article 4
Communication with the Office through the User Area

(1)  Users  can  submit  applications,  communications  and  other  documents  to  the 
Office and reply to notifications received from the Office electronically through the 
User Area.

(2)  When submitting an EU trade mark application through the User Area, the list 
of goods and services applied for must  be  entered solely  in the  field provided  for 
that purpose. If the goods and services applied for are not entered solely in the field 
provided for that purpose but are submitted in a separate document as an annex or 
filed subsequently, the application will not be considered as an application filed by 
electronic means and the corresponding fee for applications not filed by electronic 
means will apply.

389

(3)  The contents of applications, communications and other documents submitted 
electronically will, upon receipt by the Office, be imported into the Office’s database. 
Such electronic documents constitute part of the file and can be subject to inspec-
tion. Online inspection of files can be carried out only through the User Area.

(4)  Once an application, communication or other document submitted via the User 
Area has been received by the Office’s electronic data processing system, an elec-
tronic receipt will be issued, which may be in the form of (i) a confirmation screen 
on  the  user’s  device,  (ii)  a  communication  via  the  User  Area,  where  available,  or 
(iii) another form of receipt as specified in the conditions of use. The time of submit-
ting an electronic document is to be considered as the time when such an electronic 
receipt was issued by the Office’s system.

(5) 
In the event of a malfunction during the electronic transmission of an applica-
tion,  communication  or  other  document,  it  must  be  resubmitted  using  one  of  the 
other accepted means of communication. The relevant time limits are not affected.

(6)  Notwithstanding paragraph (5) and without prejudice to Article 1(2) above, an 
application for the registration or renewal of an EUTM may be submitted by fax in 
order to secure its filing date, if the applicant is prevented from filing the application 
through the User Area due to a technical malfunction. The applicant may secure the 
date of the fax filing if:

it resubmits, within three working days of the original fax submission, the appli-
(a) 
cation  for  registration  of  an  EUTM  with  the  same  content  through  the  User  Area 
together with a fax receipt clearly identifying the original fax submission; failure to 
comply with these conditions will result in the original fax submission being deemed 
as not having been received;

(b) 
it submits the application for renewal of an EUTM by fax within the last three 
working  days  before  the  expiry  of  the  initial  or  extended  statutory  time  limit  for 
renewal; any fax submission for a renewal of an EUTM outside the respective three-
working-day period will be deemed not to have been received.

Article 5
Conditions of Use of the User Area

(1)  The electronic tools available through the User Area, the conditions of their use 
and the technical conditions of electronic communication with and by the Office are 
set out in a separate document available on the Office’s website (Conditions of Use 
of the User Area).

(2)  Only applications, communications or other documents submitted electronically 
that comply with these conditions will be accepted.

Decisions of the Executive Director of the Office390

DECISION No EX-19-1

Article 6
Repeal

Decision No EX-17-4 of the Executive Director of the Office of 16 August 2017 con-
cerning communication by electronic means as amended by Decision No EX-18-1 of 
15 May 2018, is repealed as from the date of entry into force of the present decision.

Article 7
Entry into force

This  Decision  will  enter  into  force  on  1  March  2019  and  will  be  published  in  the 
Official Journal of the Office.

Done at Alicante, 18 January 2019.

Christian Archambeau
Executive Director

Annex 1 — List of official fax numbers identified in 
Article 1(4).

 
 
391

DECISION No EX-17-3 of the Executive Director 
of 18 September 2017 concerning the formal 
requirements of a priority claim for a European Union 
trade mark or a seniority claim for a European Union 
trade mark or a designation of the European Union 
under the Madrid Protocol (consolidated version)

The Executive Director of the European Union Intellectual Property Office (the Office),

Having regard to Regulation (EU) 2017/1001 of the European Parliament and of the 
Council of 14 June 2017 on the European Union trade mark  66, and in particular to 
Article 143(1), Article 153(1)(h), Article 153(2) and Article 157(4)(n) thereof,

Having regard to Commission Implementing Regulation (EU) 2018/626 of 5 March 
2018 (EUTMIR) 67,

Whereas:

(1)  Articles  35(3),  39(7),  191(2)  and  192(3)  EUTMR  provide  that  the  Executive 
Director may determine that the documentation to be provided by the applicant in 
support of the priority or seniority claim may consist of less than what is required in 
Articles 4, 6 and Article 32(1)(f) EUTMIR, provided that the information is available to 
the Office from other sources.

(2)  The information required to be contained in a priority document referred to 
in Article 35(1) EUTMR, namely the country, the file number, the filing date of the 
previous application, the name of the applicant or proprietor, the representation 
of the mark and the list of goods and services, can be available on the internet 
websites of some of the central industrial property offices of States party to the 
Paris Convention for the Protection of Industrial Property or to the Agreement 
establishing the World Trade Organization.

(3)  The information required to be contained in a seniority document referred to in 
Articles 39(2), 40(2), 191(2) and 192(3) and (6) EUTMR, namely the Member State 
or Member States in or for which the earlier mark is registered, the date of filing, 
registration and, where applicable, of priority, the number of the earlier registration, 
the name of the proprietor of the earlier registration, the representation of the trade 
mark and the indication of the goods and services for which the earlier mark is reg-

66  OJ L 154, 16.6.2017, p. 1.
67  OJ L 104, 24.4.2018, pages 37-56.

Decisions of the Executive Director of the Office392

DECISION No EX-17-3 

istered, can be available on the internet websites of the central industrial property 
offices of the Member States in which the mark is registered or, concerning interna-
tional registrations with effects in a Member State, on the internet website of the 
International  Bureau  of  the  World  Intellectual  Property  Organization  (International 
Bureau).

If this is the case, the Office will be in a position to access and verify this infor-

(4) 
mation of its own motion.

(5) 
If the required information is not available on such a website, the applicant or 
proprietor of the European Union trade mark remains under the obligation to submit 
a copy of the document referred to in Articles 35(1), 39(2) and 40(2) EUTMR and the 
holder of the international trade mark designating the European Union remains under 
the obligation to submit a copy of the document referred to in Articles 191(2) and 
192(3) EUTMR.

(6)  Article 4(2) EUTMIR confers discretionary powers on the Office on whether or 
not to require the applicant to provide a translation where the language of the previ-
ous application for which priority is claimed is not one of the languages of the Office.

(7)  The applicant itself is in a position to verify, before claiming priority or seniority, 
the availability online and the accuracy of the required information and to assess the 
corresponding need to submit or not a priority or seniority document,

HAS ADOPTED THE FOLLOWING DECISION:

Article 1
Substitution of priority documents by information available online

The evidence to be provided by the applicant in support of a priority claim may con-
sist of less than what is required under Article 4(1) EUTMIR, provided that the infor-
mation required is available to the Office from other sources, such as the website of 
a central industrial property office of a State party to the Paris Convention for the 
Protection of Industrial Property or to the Agreement establishing the World Trade 
Organization.

Article 2
Procedure

(1)  Where priority is claimed, and where the documents referred to in Article 35(1) 
EUTMR have not already been submitted by the applicant, the Office will verify of 
its own motion whether the required information on the country, the file number, the 
filing date of the previous application, the name of the applicant or proprietor, the 
representation of the mark and the list of goods and services of the earlier trade 

393

mark the priority of which is claimed is available on the website of the central indus-
trial property office of the State in or for which that earlier trade mark application is 
claimed to have been filed.

Decisions of the Executive Director of the Office394

DECISION No EX-17-3 

(2)  Where the required information is available on such a website in any of the lan-
guages of the European Union, the Office will make a note to this effect in the file 
of the European Union trade mark application. Otherwise, the Office will request the 
applicant to remedy the deficiency pursuant to Article 41(2) EUTMR by submitting 
documents in support of the claim.

Article 3
Priority documents

To the extent that the applicant submits or is required to submit evidence in support 
of the priority claim, the documentation shall consist of either a copy of the previ-
ous application or an extract of the bulletin where the earlier mark was published or 
a printout of a database extracting data from the competent central industrial prop-
erty office. The document submitted must contain the indication of the country, the 
file number, the filing date of the previous application, the name of the applicant or 
proprietor, the representation of the mark and the list of goods and services. Where 
the mark in the previous application is represented in colour(s), the priority document 
shall also contain a representation of the mark in colour(s). If the previous applica-
tion does not contain a representation of the mark in colour but only an indication of 
colour(s) or a colour claim, the priority document shall contain the same indications.

Article 4
Translations

If the priority documents submitted or the priority information referred to in Article 2 
is not in one of the languages of the  European Union, the applicant must submit, 
within a period specified by the Office, a translation into the first or second language 
of the application.

Article 5
Substitution of seniority documents by information available online

The evidence to be provided by the applicant when claiming seniority may consist 
of  less  than  what  is  required  under  Article  6  EUTMIR  and  Article  32(1)(f)  EUTMIR, 
provided that the information required is available to the Office from other sources, 
such as the website of a central industrial property office of a Member State in or for 
which the mark is registered or, concerning international registrations with effects in 
a Member State, on the website of the International Bureau.

Article 6
Procedure

(1)  Where  seniority  is  claimed,  and  where  the  documents  referred  to  in  Arti-
cles 39(2), 40(2), 191(2) and 192(3) EUTMR have not already been submitted, the 

395

Office will verify of its own motion whether the required information on the date 
of filing, registration and, where applicable, of priority of the earlier trade mark, 
the number of the earlier registration, the name of the proprietor of the earlier 
registration, the representation of the trade mark and the indication of the goods 
and services for which the earlier mark is registered is available on the website of 
the central industrial property office of the Member State in or for which that ear-
lier trade mark is claimed to be registered or, concerning international registra-
tions with effects in a Member State, on the website of the International Bureau.

(2)  Where the required information is available on such a website, the Office will 
make a note to this effect in the file of the trade mark application or registration. 
Otherwise, the Office will request the applicant to remedy the deficiency pursuant 
to Articles 40(3), 41(2), 191(4) and 192(4) EUTMR by submitting the documents in 
support of the claim referred to in Articles 39(2), 40(2), 191(2) and 192(3) EUTMR.

Article 7
Seniority documents

To the extent that the applicant or holder submits or is required to submit evidence 
in support of the seniority claim, the documentation shall consist of a copy of the 
earlier registration or an extract of the bulletin where the earlier mark was published 
or  a  printout  of  a database  extracting  data  from  the  competent  central  industrial 
property office. The document submitted must contain the date of filing, registration 
and, where applicable, of priority of the earlier trade mark, the number of the earlier 
registration, the name of the proprietor of the earlier registration, the representa-
tion of the trade mark and the indication of the goods and services for which the 
earlier mark is registered. Where the mark in the earlier registration is represented 
in colour(s), the seniority document shall also contain a representation of the mark 
in colour(s). If the earlier registration does not contain a representation of the mark 
in colour but only an indication of colour(s) or a colour claim, the seniority document 
will contain the same indications.

Article 8
Repeal

The following decisions are repealed:

Decision No EX-05-5 of 1 June 2005 concerning the evidence to be provided when 
claiming priority and seniority;

Decision  No  EX-03-5  of  20  January  2003  concerning  the  formal  requirements  of 
a priority or seniority claim.

Decisions of the Executive Director of the Office396

DECISION No EX-17-3 

Article 9
Entry into force

This decision will enter into force on 1 October 2017and will be published in the Offi-
cial Journal of the Office.

Done at Alicante, 18 September 2017

António Campinos 
Executive Director

 
 
397

DECISION No EX-17-7 of the Executive Director of 
18 September 2017 on payment methods of fees and 
charges and determining the insignificant amount of fees 
and charges (consolidated version)

The Executive Director of the European Union Intellectual Property Office (the Office),

Having regard to Regulation (EU) 2017/1001 of the European Parliament and of the 
Council of 14 June 2017 on the European Union trade mark (EUTMR),

Having regard to Council Regulation (EC) No 6/2002 of 12 December 2001 on Com-
munity designs, as amended by Council Regulation No 1891/2006 of 18 December 
2006 (CDR),

Having regard to Commission Regulation (EC) No 2246/2002 of 16 December 2002 
on the fees payable to the Office in respect of the registration of Community designs 
(CDFR),

Having regard to Council Regulation (EC) No 6/2002 of 12 December 2001 on Com-
munity designs (CDR) and Commission Regulation (EC) No 2245/2002 of 21 October 
2002 implementing Council Regulation (EC) No 6/2002 on Community designs (CDIR),

Having regard to Decision No BC-17-11 of the Budget Committee, obtained by way 
of written procedure, granting its consent on the establishment of specific payment 
methods, other than those made by payment or transfer to a bank account held by 
the Office, and on the amount below which an excessive sum paid to cover a fee or 
a charge will not be refunded,

Whereas:

(1)  Pursuant to Article 157(4)(a) EUTMR and Article 97 CDR, the Executive Direc-
tor  will  take  all  necessary  steps,  including  the  adoption  of  internal  administrative 
instructions and the publication of notices, to ensure the functioning of the Office.

(2)  Pursuant to Article 178(1) EUTMR and Article 3(1) CDFR, the Executive Director 
will lay down the amount to be charged for any services rendered by the Office other 
than those set out in Annex I to the EUTMR and the Annex to the CDFR.

(3)  Pursuant to Article 179(1) EUTMR, with the consent of the Budget Committee, 
Article 180(2) EUTMR and Articles 5(2) and 7(2) CDFR, the Executive Director may 
establish specific payment methods, other than those made by payment or transfer 

Decisions of the Executive Director of the Office398

DECISION No EX-17-7

to a bank account held by the Office, and will establish the date on which such pay-
ments are to be considered to have been made.

(4)  Pursuant to Article 181(4) EUTMR, with the consent of the Budget Committee, 
and Article 9(1) CDFR, the Executive Director may determine the amount (see below) 
for which an excessive sum paid to cover a fee or a charge will not be refunded, if 
the  amount  is  insignificant  and  the  party  concerned  has  not  expressly  requested 
a refund.

(5)  The rules on creating a system of current accounts and on using credit or debit 
cards for electronic payments are already in place in the form of public decisions and 
communications, which have been amended and updated over the years.

(6)  For  ease  of  reference  and  for  legal  certainty,  it  is  deemed  fitting  to  unify  all 
of the rules and texts on payment methods of fees and charges and insignificant 
amounts and charges, and also to repeal any outdated sources.

(7) 
It is necessary to adapt all the corresponding provisions in view of the recent 
legislative  changes  in  the  EUTMR,  which  includes  updating  legal  references  and 
terminology.

(8) 
It  is  appropriate  to  revise  the  rules  on  current  accounts  and  credit  and  debit 
cards  to  take  account  of  practical  experiences  and  technical  developments,  with 
a view to further facilitating the use of these payment methods.

(9) 
In the framework of the e-business initiative, rules must continue to allow users 
to settle fee payments in an easy, inexpensive and non-bureaucratic manner while 
also  promoting  alternative  payment  methods  to  streamline  filing  procedures  with 
the Office via the User Area of the Office’s website.

(10)  It is pertinent to specify that in limited and well-defined circumstances use of 
a current account may be made for paying fees and charges in respect of applica-
tions or requests made by persons other than the holder of the current account.

(11)  It is essential to maintain that current account holders should not be placed in 
a less favourable position than those paying by other means as concerns the point in 
time when the current account is to be debited.

(12)  It is necessary to establish the conditions and the consequences of using cur-
rent accounts or credit and debit cards as payment methods, including the conse-
quences of misuse of these payment methods,

HAS ADOPTED THE FOLLOWING DECISION:

399

General provisions on payment methods referred to in 
this Decision

Article 1
Payment methods

The specific payment methods, other than payment or transfer to a bank account 
held by the Office, established by Article 179(1) EUTMR and Article 5(2) CDFR of fees 
and charges due to the Office are payments made through current accounts opened 
at the Office, or by credit and debit cards, under the terms and conditions and subject 
to the limitations of this Decision.

Article 2
Currency and amount

1.  All provisions, deposits, transactions and payments referred to in this Decision 
are made exclusively in euros. The current accounts are held in euros and all credit or 
debit card transactions are effected in euros.

2.  Any fees set out in Annex I EUTMR and Annex CDFR, or charges, will be carried 
out for the amount of the fee, which is due in euros.

Current accounts

Article 3
Current account holders

1.  Current account holders may be:

(a)  natural  or  legal  persons  who,  in  accordance  with  Article  5  EUTMR  and  Arti-
cle 1(b) CDIR, may be proprietors of EU trade marks or holders of registered Com-
munity designs (RCDs);

(b)  persons who may act as representatives in accordance with Article 120 EUTMR 
and Article 78 CDR;

(c)  associations of representatives.

The persons and associations specified in paragraph 1 may not hold more than 

2. 
one Office current account.

Decisions of the Executive Director of the Office400

DECISION No EX-17-7

Article 4
Opening a current account

1. 
The application for opening a current account must be made in writing using the 
forms and means provided by the Office available in the User Area of the Office’s 
website.

2. 
This application must be accompanied by a declaration signed by the applicant 
stating its acceptance of all the terms and conditions laid down in this Decision, and 
authorising the Executive Director of the Office or his or her representative to debit 
from  the  current  account,  by  standing  order,  all  the  fees  and  charges  due  to  the 
Office.

3. 
The standing order to debit all the fees and charges due is valid for paying all 
fees and charges that become due to the Office by the current account holder or by 
any  person  specifically  appointed  and  authorised  to  use  the  account,  save  where 
Article 6 of this Decision applies.

4. 
The minimum initial deposit required to open a current account is EUR 1 000. 
There is no obligation to keep the minimum balance of EUR 1 000 in the account once 
it is operational.

5.  After receipt of the abovementioned deposit, the Office will confirm the opening 
of the account to the holder and provide it with an account number.

The  current  account  will  become  operational  only  when  the  initial  deposit  is 

6. 
actually entered in a bank account held by the Office.

Article 5
Depositing funds into the current account

1.  All provisions to replenish the current account must be made by bank transfer.

The account holder must ensure that there are sufficient provisions in the cur-

2. 
rent account.

3.  All bank charges incurred in any deposit operation for the current account will 
be borne by the account holder.

Article 6
Authorising a third party to use the current account

Where a party to a proceeding before the Office requests that a current account, of 
which it is not the holder and which it is not entitled to use pursuant to Article 4(3) of 

401

this Decision, be debited with a particular fee, such request will be disregarded by the 
Office unless the party submits written evidence before the date on which payment 
of the fee is deemed to have been made in accordance with Article 8 of this Deci-
sion, that the current account holder consents to the debit of that fee. Payment will 
be considered effective on the date on which the Office receives the authorisation.

Article 7
Debiting and refunding fees and charges from and to the current account

1. 
From the day on which the account is opened, the Office may debit, in accord-
ance  with  the  development  of  the  procedures  concerned  and  insofar  as  there  are 
sufficient  funds  in  the  account,  all  fees  and  charges  due  within  the  limits  of  the 
procedures, and each time a payment date will be accorded, always complying with 
the time limits laid down in Article 8 of this Decision.

2.  However,  the  Office  will  not  debit  the  current  account  for  a  particular  fee  or 
charge if the holder specifically indicates in writing that the account may not be used 
for the payment of such a fee or charge.

Refunds will be made to the current account of the natural or legal person enti-
3. 
tled to the refund or, where applicable, to the current account of the representative 
at the moment when the refund is made.

Article 8
Date on which payment is deemed to have been made

When the current account is debited, the fee payment or charge will be deemed to 
have been made:

(a) 
for the basic fee for an EU trade mark application and for the class fee for the 
second and subsequent classes of goods and services for an EU trade mark applica-
tion: on the day of receipt of the application; or if the applicant expressly requests, on 
any other day up to the last day of the one-month time limit provided for payment;

(b) 
for the fees for an EU trade mark renewal (including class fees): on the day of 
receipt of the request; or if the proprietor expressly requests, on any other day up to 
the registration expiry date;

(c) 
for the fees for an EU trade mark renewal (including class fees and the addi-
tional fee for late payment), where renewal is requested within the further period 
of six months following the expiry of the registration: on the day of receipt of the 
request; or if the proprietor expressly requests, on any other day up to the last day of 
the six-month period;

Decisions of the Executive Director of the Office402

DECISION No EX-17-7

(d) 
for the registration fee, additional registration fee, publication fee and additional 
publication fee for an RCD application, if no deferment of publication is requested: on 
the day on which the RCD application was filed;

(e) 
for the registration fee, additional registration fee, deferment fee and additional 
deferment fee for an application for an RCD, if deferment of publication is requested: 
on the day on which the RCD application was filed;

(f) 
for the publication fee and additional publication fee for deferment for an RCD 
application: on the day which is three months before the day on which the period for 
deferment expires, or on the day on which the holder requests the earlier publication 
pursuant to Article 15(1) CDIR, whichever is earlier;

(g) 
for the fees for an RCD renewal: on the day of receipt of the request; or if the 
holder expressly requests on the last day of the six-month time limit provided for 
payment;

(h) 
for the fees for an RCD renewal where renewal is requested within the further 
period of six months following the last day of the month in which protection ends: on 
the day of receipt of the request; or if the holder expressly requests on the last day 
of the six-month period — the debit will include the additional fee for late payment;

for all other fees and charges: on the day of receipt of the request for which the 

(i) 
fee or charge is due.

Article 9
Insufficient funds

If, when the Office proceeds to debiting the current account, the account lacks 
1. 
sufficient funds to cover the payment of the full amount of the fee(s) or charge(s) to 
be debited, the current account holder will be notified.

If  the  current  account  is  replenished  with  sufficient  funds  within  one  month 
2. 
after receipt of the notification referred to in the preceding paragraph, thus allow-
ing payment of the fees concerned and of the administrative charges provided for 
in paragraph 3 to be made, the Office will debit the corresponding amount from the 
account automatically, and the payment will be considered to have been made on the 
day on which it was initially due.

3. 
The  administrative  charges  referred  to  in  paragraph  2  will  come  to  20  %  of 
the total of the late fee, and will in no case exceed the maximum of EUR 500 or the 
minimum of EUR 100.

403

4. 
The administrative charges referred to in paragraph 2 will not be payable if the 
current account holder submits evidence to the Office that the payment to provide 
the current account with sufficient funds was initiated, in the manner provided for 
in Article 180(3) EUTMR or Article 7(3)(a)(i), (ii) or (iii) CDFR, before the point in time 
when the Office proceeded to debit the current account.

5.  Where the current account is replenished to cover only part of the amount due, 
the debit will be made, without exception, in the following order:

(i) 

the administrative charges referred to in paragraph 2 will be debited first;

(ii) 
if there are several fees or charges pending, the debit will be made in chrono-
logical order taking into account the date when the fees were due, and only where 
the complete fee can be debited.

6.  When  the  current  account  is  not  replenished  to  cover  all  the  administrative 
charges and the concerned fees or charges on time, for those fees not covered the 
payment will be deemed not to have been made and any rights depending on timely 
payment will be lost. No further communication on the lack of funds will be sent for 
any outstanding payments. A letter to inform of these deficiencies or loss to rights of 
the procedures concerned will be issued in accordance with the Regulations govern-
ing the proceedings of the particular fee(s) not paid.

Article 10
Current account statements

The  current  account  holder  can  view,  save  or  print  account  movements  and 

1. 
pending debits online via the User Area of the Office’s website.

In the event the current account holder identifies any irregularity or error in the 

2. 
operations carried out in the current account, it must notify the Office.

Article 11
Correction of mistakes

If the Office considers that an error has been made in the debiting of the standing 
order, it must make a reverse of accounts backdated to the day on which the pay-
ment was made.

Article 12
Closure of current account by the holder

1.  A current account holder may close the account by notifying the Office in writing.

Decisions of the Executive Director of the Office404

DECISION No EX-17-7

2. 
The standing order will cease to have effect as from the date of receipt of the 
notification. The Office will settle the account and any payments will be backdated 
to the day following the date of receipt of the notification.

3. 
The account holder must ensure the timely payment of any outstanding debits 
at the date of submitting the notification referred to in paragraph 1. Consequently, 
the payment of all fees or charges due following the receipt of the notification will 
not be made through the current account. If payment is not received for these debits 
by bank transfer or by any other means of payment available, the lack of payment 
may lead to a loss of rights. The Office will not inform the holder of these outstand-
ing debits at the time of closing the account or suspending the standing order.

Article 13
Closure of current account by the Office

The Office reserves the right to close the current account by notifying the holder 
1. 
in writing, in particular where it deems that the use made of the current account was 
not in accordance with the terms and conditions laid down in this Decision or where it 
is determined that there has been a misuse of the account. Misuse could be consid-
ered in situations such as systematic lack of funds, repeated misuse of third-party 
authorisations or multiple accounts, non-payment of the administrative charges set 
out in Article 9 of this Decision, or situations where the actions of the account holder 
have led to an excessive administrative burden on the Office.

2. 
The Office will inform the holder of its intention to close the current account 
stating the reasons on which the closure is based, and the holder will be given a two-
month time limit to submit observations in reply. Following the expiry of this time 
limit, and taking into account any observations filed, the Office will notify the current 
account holder of the outcome.

3. 
The closing of the account will come into effect on the day when the decision 
to close the current account by the Office becomes final. The balance of the current 
account will be refunded to the holder.

The decision to close a current account by the Office will be taken by the Direc-

4. 
tor of the department entrusted with the management of the Office’s finances.

405

Credit and debit cards

Article 14
Credit and debit cards as a payment method

Credit  or  debit  card  payments  can  only  be  made  by  electronic  means:  they  are 
accepted only when they accompany an act performed via electronic systems and 
are permitted by those systems.

Article 15
Payments for which credit and debit cards may be used

1.  Certain fees payable to the Office may be paid by credit or debit card, provided 
that payment is made in the context of an act performed via the User Area. The rel-
evant online tool (e.g. e-filing) will indicate when a fee can be paid by credit or debit 
card.

2.  Credit or debit cards may not be used:

(a) 

for paying charges referred to in Article 178(1) EUTMR;

(b) 

for topping up a current account.

Article 16
Date on which payment is deemed to have been made

Payment by credit or debit card is deemed to have been made on the date when the 
related electronic filing or request it refers to is successfully completed via the User 
Area and if the money actually reaches the Office’s account as a consequence of the 
credit or debit card transaction, and is not withdrawn at a later date.

Article 17
Failure of acceptance

Where the terms and conditions laid down in this Decision are fulfilled, the Office will 
proceed with the transaction of debiting the credit or debit card. Where the transac-
tion fails for whatever reason, payment is considered not to have been made. The 
Office declines any responsibility, even when the failure of the transaction was not 
the responsibility of the payer.

Decisions of the Executive Director of the Office406

DECISION No EX-17-7

Insignificant amounts

Article 18
Refunds of excessive amounts

The insignificant amount referred to in Article 181(4) EUTMR and Article 9(1) CDFR 
will be EUR 15.

Final provisions

Article 19
Repeal of other provisions

The following provisions are all repealed:

• 

• 

• 

• 

• 

• 

• 

• 

Decision No EX-96-1 of 11 January 1996 concerning the conditions for opening 
current accounts at the Office;

Decision  No  EX-96-7  of  30  July  1996  concerning  the  conditions  for  opening 
current accounts at the Office;

Decision  No  EX-03-1  of  20  January  2003  amending  Decision  No  EX961  of 
11 January 1996 concerning the conditions for opening current accounts at the 
Office;

Decision  No  EX-06-1  of  12  January  2006  amending  Decision  No  EX961  of 
11 January 1996 concerning the conditions for opening current accounts at the 
Office;

Decision No EX-06-3 of 18 May 2006 concerning electronic payment of fees 
by credit card;

Decision No EX-03-6 of 20 January 2003 determining the insignificant amount 
of fees and charges;

Communication No 5/96 of 8 August 1996 concerning current accounts;

Communication  No  6/96  of  8  August  1996  concerning  payment  of  fees  by 
cheque;

407

• 

Communication No 5/01 of 29 June 2001 concerning the availability of current 
account statements on the Office’s website.

Article 20
Entry into force

This Decision will enter into force on 1 October 2017. It will be published in the Offi-
cial Journal of the Office.

Done at Alicante, 18 September 2017.

António Campinos 
Executive Director

Decisions of the Executive Director of the Office 
 
408

DECISION No EX-17-6

DECISION No EX-17-6 of the Executive Director of 
22 September 2017 on technical specifications for 
annexes submitted on data carriers (consolidated version)

The Executive Director of the European Union Intellectual Property Office (the Office),

Having regard to Regulation (EU) 2017/1001 of the European Parliament and of the 
Council of 14 June 2017 on the European Union trade mark (EUTMR) 68,

Having regard to Council Regulation (EC) No 6/2002 of 12 December 2001 on Com-
munity designs, as amended by Council Regulation No 1891/2006 of 18 December 
2006 (CDR) 69,

Having regard to Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 
(EUTMDR) 70,

Whereas:

(1)  Pursuant to Article 64(1) EUTMDR, the Executive Director will lay down the tech-
nical specifications relating to annexes that are submitted on data carriers.

It is pertinent to specify that, in limited and well-defined circumstances, use of 
(2) 
data carriers as a means for submitting documents or other items of evidence may 
be used in any proceedings.

(3) 
It is essential to maintain that parties that rely on submitting annexes in elec-
tronic format on a data carrier should not be placed in a less favourable position than 
those submitting evidence by other means.

(4) 
It is necessary to establish the conditions and the consequences of using spe-
cific file formats when using data carriers, including the consequences of non-com-
pliance with these requirements,

HAS ADOPTED THE FOLLOWING DECISION:

68  OJ L 154, 16.6.2017, p. 1.
69  OJ L 1, 5.1.2002, p. 1.
70  OJ L 205, 8.8.2017, p. 1.

409

Article 1
Data carriers

The  Office  considers  data  carriers  to  be  media  such  as  CD  ROMs,  DVDs,  and 

1. 
other small portable storage drives (e.g. USB flash drives or similar memory units).

External hard drives, memory cards, other optical discs (other than those listed 

2. 
above in paragraph 1) and tapes of any kind are excluded.

Article 2
File formats and sizes

Annexes submitted on data carriers will be accepted in the formats and according to 
the size restrictions listed in Annex 1 to this Decision.

Article 3
Incomplete or illegible annexes

1.  Where an annex submitted by means of a data carrier, which complies with the 
requirements of Article 2 and Annex 1, is illegible or cannot be opened, the Office 
will inform the sender accordingly and invite him or her to resend the original within 
a period to be specified by the Office.

2.  Where multiple copies of the data carrier are submitted, if an annex or file is 
illegible in any of the copies submitted, the party must resend as many copies of the 
annex or file as submitted originally.

Article 4
Consequences of non-compliance

Any annexes that do not comply with the technical specifications laid down in Arti-
cle 2 of this Decision and Annex 1, or are not resent as laid down in Article 3 of this 
Decision, will be deemed not to have been filed.

Article 5
Entry into force

This Decision will enter into force on 1 October 2017. It will be published in the Offi-
cial Journal of the Office.

Done at Alicante, 22 September 2017.

António Campinos 
Executive Director

Decisions of the Executive Director of the Office 
 
410

DECISION No EX-17-6

Annex 1

File formats and sizes

1.  Annexes submitted on data carriers will be accepted in the following formats:

(a)  graphic representations and photographs shall be in JPEG and JPG format;

(b)  sound files shall be in MP3 format;

(c)  video files shall be in MP4 format;

(d)  other attachments, including written submissions shall be in PDF, JPEG and JPG 
format.

The maximum size of each individual attachment saved on the data carrier is 

2. 
restricted to 200 MB. This size is of the final uncompressed file.

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