Source: EURLEX
Language: en
Format: md

**Council of the**
**European Union**

**Interinstitutional File:**

**2013/0088 (COD)**

**LEGISLATIVE ACTS AND OTHER INSTRUMENTS**

**Brussels, 12 November 2015**
**(OR. en)**

**10373/1/15**
**REV 1**

**PI 42**
**CODEC 949**
**PARLNAT 127**

Subject: Position of the Council at first reading with a view to the adoption of a
REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE
COUNCIL 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)

         - Adopted by the Council on 10 November 2015

10373/1/15 REV 1 vm

# DGG 3B EN

**REGULATION (EU) 2015/…**

**OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL**

**of**

**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)**

**(Text with EEA relevance)**

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty on the Functioning of the European Union, and in particular

Article 118, first paragraph, thereof,

Having regard to the proposal from the European Commission,

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

Acting in accordance with the ordinary legislative procedure **[1]**,

**1** 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 … [(not yet published in the
Official Journal)] [and decision of the Council of …].

10373/1/15 REV 1 vm 1

# DGG 3B EN

Whereas:

(1) Council Regulation (EC) No 40/94 **[1]**, which was codified in 2009 as Council Regulation

(EC) No 207/2009 **[2]**, created a system of trade mark protection specific to the

European 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

according to the national trade mark systems, harmonised by Council

Directive 89/104/EEC **[3]**, which was codified as Directive 2008/95/EC of the

European Parliament and of the Council **[4]** .

(2) As a consequence of the entry into force of the Lisbon Treaty, the terminology of

Regulation (EC) No 207/2009 should be updated. This entails the replacement of

‘Community trade mark’ by ‘European Union trade mark’ (‘EU trade mark’). In order to

better reflect the actual work carried out by the Office for Harmonization in the Internal

Market (trade marks and designs), its name should be replaced by ‘European Union

Intellectual Property Office’ (‘the Office’).

(3) Further to the Commission’s Communication of 16 July 2008 on an Industrial Property

Rights Strategy for Europe, the Commission carried out a comprehensive evaluation of the

overall functioning of the trade mark system in Europe as a whole, covering Union and

national levels and the interrelation between the two.

**1** Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark
(OJ L 11, 14.1.1994, p. 1).
**2** Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark
(OJ L 78, 24.3.2009, p. 1).
**3** 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).
**4** Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to
approximate the laws of the Member States relating to trade marks (OJ L 299, 8.11.2008,
p. 25).

10373/1/15 REV 1 vm 2

# DGG 3B EN

(4) 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 present proposals for the

revision of Regulation (EC) No 207/2009 and Directive 2008/95/EC.

(5) 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.

(6) National trade marks continue nevertheless to be necessary for those undertakings which

do not want protection of their trade marks at Union level or which are unable to obtain

Union-wide protection while national protection does not face any obstacles. It should be

left to each person seeking trade mark protection to 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.

(7) While the evaluation of the overall functioning of the Community trade mark system

confirmed that many aspects of that system, including the fundamental principles on which

it is based, have stood the test of time and continue to meet business needs and

expectations, the Commission concluded in its Communication ‘A Single Market for

Intellectual Property Rights’ of 24 May 2011 that there is a need to modernise the trade

mark system in the Union by making it more effective, efficient and consistent as a whole

and by adapting it to the internet era.

10373/1/15 REV 1 vm 3

# DGG 3B EN

(8) In parallel with the improvements and amendments of the EU trade mark system, national

trade mark laws and practices should be further harmonised and brought into line with the

EU trade mark system to the extent appropriate in order to create as far as possible equal

conditions for the registration and protection of trade marks throughout the Union.

(9) In order to allow for more flexibility while also ensuring greater legal certainty with regard

to the means of representation of trade marks, the requirement of graphic representability

should be deleted from the definition of an EU trade mark. 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.

(10) Regulation (EC) No 207/2009 currently falls short of offering the same degree of

protection to designations of origin and geographical indications as other instruments of

Union law. It is therefore necessary to clarify the absolute grounds for refusal concerning

designations of origin and geographical indications and to ensure that such grounds for

refusal are fully consistent with relevant Union legislation and national law providing for

protection of those intellectual property titles. For reasons of coherence with other Union

legislation, the scope of those absolute grounds should be extended to cover also protected

traditional terms for wine and traditional specialities guaranteed.

10373/1/15 REV 1 vm 4

# DGG 3B EN

(11) In order to maintain strong protection of rights in designations of origin and geographical

indications protected at Union and national levels, it is necessary to clarify that those rights

entitle any person authorised under the relevant law to oppose a later application for the

registration of an EU trade mark, regardless of whether or not those rights are also grounds

for refusal to be taken into account _ex officio_ by the examiner.

(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 a way such 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.

10373/1/15 REV 1 vm 5

# DGG 3B EN

(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 comparative advertising where such comparative

advertising is contrary to Directive 2006/114/EC of the European Parliament and of the

Council **[1]** .

(15) In order to strengthen trade mark protection and combat counterfeiting more effectively,

and in line with international obligations of the Union under the framework of the World

Trade Organization (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 Public 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.

**1** Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006
concerning misleading and comparative advertising (OJ L 376, 27.12.2006, p. 21).

10373/1/15 REV 1 vm 6

# DGG 3B EN

(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 situations, including transit,

transhipment, warehousing, free zones, temporary storage, inward processing or temporary

admission, also when such goods are not intended to be placed on the market of the Union.

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 European Parliament and the

Council **[1]**, 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 goods in question are

subsequently found not to infringe an intellectual property right.

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

10373/1/15 REV 1 vm 7

# DGG 3B EN

(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 limitations 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 more effectively,

they should be entitled to prohibit the affixing of an infringing mark to goods and

preparatory acts carried out prior to the affixing.

10373/1/15 REV 1 vm 8

# DGG 3B EN

(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 create

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 indications 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 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 Regulation should be

applied in a way that ensures full respect for fundamental rights and freedoms, and in

particular the freedom of expression.

10373/1/15 REV 1 vm 9

# DGG 3B EN

(22) 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.

(23) 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.

(24) In view of the gradual decline and insignificant number of EU trade mark applications filed

at the central industrial property offices of the Member States and the Benelux Office for

Intellectual Property, it should be possible to file an EU trade mark application only at the

Office.

10373/1/15 REV 1 vm 10

# DGG 3B EN

(25) EU trade mark protection is granted in relation to specific goods or services whose nature

and number determine the extent of protection afforded to the trade mark owner. It is

therefore essential to establish rules for the designation and classification of goods and

services in Regulation (EC) No 207/2009 and to ensure legal certainty and sound

administration by requiring that the goods and services for which trade mark protection is

sought are identified by the applicant with sufficient clarity and precision to enable the

competent authorities and economic operators, on the basis of the application alone, to

determine the extent of the protection applied for. The use of general terms should be

interpreted as including only all goods and services clearly covered by the literal meaning

of the term. Proprietors of EU trade marks, which because of the previous practice of the

Office are registered in respect of the entire heading of a class of the Nice Classification,

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.

(26) It is appropriate to streamline the regime of EU trade mark and national searches by

avoiding unnecessary delays in registering an EU trade mark and to render it more flexible

in terms of user needs and preferences by also making the search for EU trade marks

optional. The optional EU trade mark and national 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.

10373/1/15 REV 1 vm 11

# DGG 3B EN

(27) As a complement to the existing provisions on Community collective marks and to remedy

the current imbalance between national systems and the EU trade mark system, it is

necessary to add a set of specific provisions for the purpose of providing protection to

European Union certification marks (‘EU certification marks’) which allow a certifying

institution or organisation to permit adherents to the certification system to use the mark as

a sign for goods or services complying with the certification requirements.

(28) The experience gained in the application of the current system of EU trade marks has

revealed the potential for improvement of certain aspects of procedure. Consequently,

certain measures should be taken to simplify and speed up procedures where appropriate

and to enhance legal certainty and predictability where required.

(29) For reasons of legal certainty and in order to provide greater transparency, it is appropriate

to clearly define all the tasks of the Office, including those which are not related to the

management of the EU trade mark system.

10373/1/15 REV 1 vm 12

# DGG 3B EN

(30) With the aim of promoting convergence of practices and of developing common tools, it is

necessary to establish an appropriate framework for cooperation between the 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 maximum 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.

(31) To the extent appropriate, certain principles regarding the governance of the Office should

be adapted to the Common Approach on EU decentralised agencies adopted by the

European Parliament, the Council and the Commission in July 2012.

(32) In the interest of greater legal certainty and transparency, it is necessary to update some

provisions concerning the organisation and functioning of the Office.

(33) It is desirable to facilitate friendly, expeditious and efficient dispute resolution 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.

10373/1/15 REV 1 vm 13

# DGG 3B EN

(34) The setting up of the EU trade mark system has resulted in increased financial burdens for

the central industrial property offices and other authorities of the Member States. The

additional costs are related to the handling of a higher number of opposition and invalidity

procedures 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.

(35) 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.

10373/1/15 REV 1 vm 14

# DGG 3B EN

(36) Given the essential importance of the amounts of fees payable to the Office for the

functioning of the EU trade mark system and its complementary relationship as regards

national trade mark systems, it is necessary to set those fee amounts directly in Regulation

(EC) No 207/2009 in the form of an annex. The amounts of the fees should be fixed at a

level ensuring 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-size enterprises;

and third, the rights of proprietors of an EU trade mark are enforced efficiently in the

Member States.

(37) Regulation (EC) No 207/2009 confers powers on the Commission to adopt rules

implementing that Regulation. As a consequence of the entry into force of the Lisbon

Treaty, the powers conferred upon the Commission under Regulation (EC) No 207/2009

need to be aligned to Articles 290 and 291 of the Treaty on the Functioning of the

European Union (TFEU). As a result, it is also necessary to incorporate certain rules which

are currently contained in Commission Regulation (EC) No 2868/95 **[1]**, Commission

Regulation (EC) No 2869/95 **[2]**, and Commission Regulation (EC) No 216/96 **[3]** in the text of

Regulation (EC) No 207/2009. Commission Regulation (EC) No 2868/95 should therefore

be amended accordingly, and Commission Regulation (EC) No 2869/95 should be

repealed.

**1** 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).
**2** Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the
Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ L 303,
15.12.1995, p. 33).
**3** 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).

10373/1/15 REV 1 vm 15

# DGG 3B EN

(38) To the extent that the powers conferred upon the Commission under Regulation (EC)

No 207/2009 need to be aligned to Article 290 TFEU, it is of particular importance that the

Commission carry out appropriate consultations during its preparatory work, including at

expert level. The Commission, when preparing and drawing-up delegated acts, should

ensure a simultaneous, timely and appropriate transmission of relevant documents to the

European Parliament and to the Council.

(39) 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 delegated acts in accordance with

Article 290 TFEU should be delegated to the Commission in respect of specifying the

details on the procedures for filing and examining an opposition and those procedures

governing the amendment of the application.

(40) In order to ensure that an EU trade mark can be revoked or declared invalid in an effective

and efficient way by means of transparent, thorough, fair and equitable procedures, the

power to adopt delegated acts in accordance with Article 290 TFEU should be delegated to

the Commission in respect of specifying the procedures for revocation and invalidity.

10373/1/15 REV 1 vm 16

# DGG 3B EN

(41) In order to allow for an effective, efficient and complete review of decisions of the Office

by the Boards of Appeal by means of a transparent, thorough, fair and equitable procedure

which takes into account the principles laid down in Regulation (EC) No 207/2009, the

power to adopt delegated acts in accordance with Article 290 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 examination of an appeal, the formal content and form of the

Board of Appeal’s decisions, and the reimbursement of the appeal fees.

(42) In order to ensure a smooth, effective and efficient operation of the EU trade mark system,

the power to adopt delegated 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 arrangements for taking of evidence, the detailed

arrangements for notification, the means of communication and the forms to be used by the

parties to proceedings, the rules governing the calculation and duration of time-limits, the

procedures for the revocation of a decision or for cancellation of an entry in the Register,

the detailed arrangements for the resumption of proceedings, and the details on

representation before the Office.

(43) In order to ensure an effective and efficient organisation of the Boards of Appeal, the

power to adopt delegated acts in accordance with Article 290 TFEU should be delegated to

the Commission in respect of specifying the details on the organisation of the Boards of

Appeal.

10373/1/15 REV 1 vm 17

# DGG 3B EN

(44) 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, the power to adopt delegated

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 communications to be made to the World

Intellectual Property Organization (WIPO), and the details of the procedure concerning

international registrations based on a basic application or basic registration relating to a

collective mark, certification mark or guarantee mark.

10373/1/15 REV 1 vm 18

# DGG 3B EN

(45) In order to ensure uniform conditions for the implementation of this Regulation,

implementing powers should be conferred on the Commission in respect 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 concerning publications in the European Union Trade Marks

Bulletin and the Official Journal of the Office, the detailed arrangements for exchange of

information between the Office and national authorities, detailed arrangements concerning

translations 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 requirements

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 **[1]** .

(46) 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.

**1** 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).

10373/1/15 REV 1 vm 19

# DGG 3B EN

(47) 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 **[1]** and

delivered an opinion on 11 July 2013.

(48) Regulation (EC) No 207/2009 should therefore be amended accordingly,

HAVE ADOPTED THIS REGULATION:

**1** 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).

10373/1/15 REV 1 vm 20

# DGG 3B EN

_Article 1_

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

(1) In the title, ‘Community trade mark’ is replaced by ‘European Union trade mark’.

(2) The term ‘Community trade mark’ is replaced by ‘European Union trade mark (“EU trade

mark”)’ in Article 1(1); and elsewhere in the Regulation, it is replaced by ‘EU trade mark’

and any necessary grammatical changes are made.

(3) Throughout the Regulation, the term ‘Community trade mark court’ is replaced by ‘EU

trade mark court’ and any necessary grammatical changes are made.

(4) The term ‘Community collective mark’ is replaced by ‘European Union collective mark

(“EU collective mark”)’ in Article 66(1); and elsewhere in the Regulation, it is replaced by

‘EU collective mark’ and any necessary grammatical changes are made.

(5) Throughout the Regulation, except in the cases referred to in points (2), (3) and (4), the

words ‘Community’, ‘European Community’ and ‘European Communities’ are replaced by

‘Union’ and any necessary grammatical changes are made.

(6) Throughout the Regulation, the term ‘President of the Office’ and all references to that

President are replaced by ‘Executive Director of the Office’ / ‘Executive Director’, as

appropriate, and any necessary grammatical changes are made.

10373/1/15 REV 1 vm 21

# DGG 3B EN

(7) Article 2 is replaced by the following:

_‘Article 2_

_Office_

1. A European Union Intellectual Property Office (“the Office”), is hereby 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.’.

(8) Article 4 is replaced by the following:

_‘Article 4_

_Signs of which an EU trade mark may consist_

An EU 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:

(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.’.

10373/1/15 REV 1 vm 22

# DGG 3B EN

(9) Article 7(1) is amended as follows:

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

‘(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;’;

(b) points (j) and (k) are replaced by the following:

‘(j) trade marks which are excluded from registration, pursuant to Union legislation

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 legislation

or international agreements to which the Union is party, providing for

protection of traditional terms for wine;’;

10373/1/15 REV 1 vm 23

# DGG 3B EN

(c) the following points are added:

‘(l) trade marks which are excluded from registration pursuant to Union legislation

or international agreements to which the Union is party, providing for

protection of traditional specialities guaranteed;

(m) trade marks which consist of, or reproduce in their essential elements, an

earlier plant variety denomination registered in accordance with Union

legislation 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.’.

10373/1/15 REV 1 vm 24

# DGG 3B EN

(10) Article 8 is amended as follows:

(a) the following paragraph is inserted:

‘4a. Upon opposition by any person authorised under the relevant law to exercise

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, subject to its

subsequent registration;

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

prohibit the use of a subsequent trade mark.’;

10373/1/15 REV 1 vm 25

# DGG 3B EN

(b) paragraph 5 is replaced by the following:

‘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

detrimental to, the distinctive character or the repute of the earlier trade mark.’.

(11) Article 9 is replaced by the following:

‘ _Article 9_

_Rights conferred by an EU trade mark_

1. The registration of an EU trade mark shall confer on the proprietor exclusive rights

therein.

10373/1/15 REV 1 vm 26

# DGG 3B EN

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:

(a) the sign is identical with the EU trade mark and is used in relation to goods or

services which are identical with those for which the EU trade mark is

registered;

(b) the sign is identical with, or similar to, the EU trade mark and is used in

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,

similar 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 thereof;

10373/1/15 REV 1 vm 27

# DGG 3B EN

(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;

(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.

10373/1/15 REV 1 vm 28

# DGG 3B EN

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 concerning customs enforcement of intellectual property rights,

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.’.

(12) The following articles are inserted:

_‘Article 9a_

_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 infringement 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 following acts if carried out in the course of trade:

(a) affixing a sign identical with or similar to the EU trade mark on packaging, labels,

tags, security or authenticity features or devices or any other means on which the

mark may be affixed;

(b) offering or placing on the market, or stocking for those purposes, or importing or

exporting, packaging, labels, tags, security or authenticity features or devices or any

other means on which the mark is affixed.

10373/1/15 REV 1 vm 29

# DGG 3B EN

_Article 9b_

_Date from which rights against third parties prevail_

1. The rights conferred by an EU trade mark shall prevail against third parties from the

date of publication of the registration of the trade mark.

2. Reasonable compensation may be claimed in respect of acts occurring after the date

of publication of 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. The court seized of a case shall not decide upon the merits of the case until the

registration has been published.’.

(13) Article 12 is replaced by the following:

‘ _Article 12_

_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:

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

person;

10373/1/15 REV 1 vm 30

# DGG 3B EN

(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

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 product

or service, in particular as accessories or spare parts.

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

with honest practices in industrial or commercial matters.’.

(14) Article 13(1) is replaced by the following:

‘1. An EU trade mark shall not entitle the proprietor to prohibit its use in relation 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.’.

10373/1/15 REV 1 vm 31

# DGG 3B EN

(15) The following article is inserted:

‘ _Article 13a_

_Intervening right of the proprietor of a later registered trade mark as defence in_

_infringement proceedings_

1. In infringement proceedings, the proprietor of 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 53(1),(3)or (4), 54(1) or (2),

or 57(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 pursuant to Article 8, or

Article 9(1) or (2), or 46(3) of Directive … **[+]** .

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.’.

**+** OJ: Please insert the number of the Directive in doc st10374/15.

10373/1/15 REV 1 vm 32

# DGG 3B EN

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

‘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 registered 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.’.

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

‘1. Unless Articles 17 to 24 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:’.

(18) Article 17 is amended as follows:

(a) paragraph 4 is deleted;

10373/1/15 REV 1 vm 33

# DGG 3B EN

(b) the following paragraphs are inserted:

‘5a. 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 transfer in

accordance with paragraphs 2 and 3. The application may further contain,

where applicable, information to identify the representative of the new

proprietor.

5b. 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

registration do not overlap and that a separate file, including a new

registration number, is established for the new registration.

Those implementing acts shall be adopted in accordance with the examination

procedure referred to in Article 163(2).

10373/1/15 REV 1 vm 34

# DGG 3B EN

5c. Where the conditions applicable to the registration of a transfer, as laid down in

paragraphs 1 to 3, or in the implementing acts referred to in paragraph 5b, are

not fulfilled, the Office shall notify the applicant of the deficiencies. If the

deficiencies are not remedied within a period specified by the Office, it shall

reject the application for registration of the transfer.

5d. 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.

5e. Paragraphs 5a to 5d shall also apply to applications for EU trade marks.

5f. 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. 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.’.

10373/1/15 REV 1 vm 35

# DGG 3B EN

(19) Article 18 is replaced by the following:

‘ _Article 18_

_Transfer of a trade mark registered in the name of an agent_

1. Where an EU trade mark is registered in the name of the agent or representative of a

person who is the proprietor of that trade mark, without the proprietor’s

authorisation, the latter shall be entitled to demand the assignment of the EU trade

mark in his favour, unless such agent or representative justifies his action.

2. The proprietor may submit a request for assignment pursuant to paragraph 1 of this

Article to the following:

(a) the Office, pursuant to Article 53(1)(b), instead of an application for a

declaration of invalidity;

(b) a European Union trade mark court (“EU trade mark court”) as referred to in

Article 95, instead of a counterclaim for a declaration of invalidity based on

Article 100(1).’.

(20) Article 19 is amended as follows:

(a) paragraph 2 is replaced by the following:

‘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.’;

10373/1/15 REV 1 vm 36

# DGG 3B EN

(b) the following paragraph is added:

‘3. An entry in the Register effected pursuant to paragraph 2 shall be cancelled or

modified at the request of one of the parties.’.

(21) In Article 20, the following paragraph is added:

‘4. An entry in the Register effected pursuant to paragraph 3 shall be cancelled or

modified at the request of one of the parties...

(22) In Article 22, the following paragraph is added:

‘6. An entry in the Register effected pursuant to paragraph 5 shall be cancelled or

modified at the request of one of the parties.’.

10373/1/15 REV 1 vm 37

# DGG 3B EN

(23) The following article is inserted:

_‘Article 22a_

_Procedure for entering licences and other rights in the Register_

1. Article 17(5a) and (5b) and the rules adopted pursuant to it, and Article 17(5d) shall

apply _mutatis mutandis_ to the registration of a right in rem or transfer of a right in

rem as referred to in Article 19(2), the levy of execution as referred to in

Article 20(3), the involvement in an insolvency procedure as referred to in

Article 21(3), as well as to the registration of a licence or transfer of a licence as

referred to in Article 22(5), subject to the following:

(a) the requirement relating to the identification of goods and services to 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;

(b) the requirement relating to the documents proving the transfer shall not apply

where the request is made by the proprietor of the EU trade mark.

2. The application for registration of the rights referred to in paragraph 1 shall not be

deemed to have been filed until the required fee has been paid.

3. The application for registration of a licence may contain a request to record a licence

in the Register as one or more of the following:

(a) an exclusive licence;

10373/1/15 REV 1 vm 38

# DGG 3B EN

(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 pursuant to points (c), (d)

and (e), 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 19 to 22,

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 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.

5. Paragraphs 1 and 3 shall apply _mutatis mutandis_ to applications for EU trade marks.’.

10373/1/15 REV 1 vm 39

# DGG 3B EN

(24) The following article is inserted:

‘ _Article 24a_

_Procedure for cancelling or modifying the entry in the Register of licences and other rights_

1. A registration effected under Article 22a(1) shall be cancelled or modified at the

request of one of the persons concerned.

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 enforcement

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 registered 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 registration are not

satisfied, the Office shall notify the applicant of the deficiency. If the deficiency is

not corrected within a period specified by the Office, it shall reject the application for

cancellation or modification of the registration.

6. Paragraphs 1 to 5 of this Article shall apply _mutatis mutandis_ to entries made in the

files pursuant to Article 22a(5).’.

10373/1/15 REV 1 vm 40

# DGG 3B EN

(25) Article 25 is replaced by the following:

‘ _Article 25_

_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 identification 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.’.

(26) Article 26 is amended as follows:

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

‘(d) a representation of the mark, which satisfies the requirements set out in

Article 4(b).’;

(b) paragraphs 2 and 3 are replaced by the following:

‘2. The application for an EU trade mark shall be subject to the payment of the

application fee covering one class of goods or services and, where appropriate,

of one or more class fees for each class of goods and services exceeding the

first class and, where applicable, the search fee.

10373/1/15 REV 1 vm 41

# DGG 3B EN

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 electronically, the

Executive Director may determine the formats and maximum size of such an

electronic file.’;

(c) the following paragraph is added:

‘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 163(2).’.

(27) Article 27 is replaced by the following:

_‘Article 27_

_Date of filing_

The date of filing of an EU trade mark application shall be the date on which the

documents containing the information specified in Article 26(1) are filed with the Office

by the applicant, subject to payment of the application fee within one month of filing those

documents.’.

10373/1/15 REV 1 vm 42

# DGG 3B EN

(28) Article 28 is replaced by the following:

‘ _Article 28_

_Designation and classification of goods and services_

1. Goods and services in respect of which 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 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 the protection of the trade mark is sought shall be

identified by the applicant with sufficient clarity and precision to enable the

competent authorities and economic operators, on that sole basis, to determine the

extent of the protection sought.

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.

10373/1/15 REV 1 vm 43

# DGG 3B EN

5. The use of general terms, including the general indications of the class headings of

the Nice Classification, shall be interpreted as including all the goods or services

clearly covered by the literal meaning of the indication or term. The use of such

terms or indications shall not be interpreted as comprising a claim to goods or

services which cannot be so understood.

6. Where the applicant requests registration for more than one class, the 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 class, provided that the

goods or services so designated are included in the alphabetical list for that class of

the edition of the Nice Classification in force at the date of filing.

10373/1/15 REV 1 vm 44

# DGG 3B EN

The declaration shall be filed at the Office within six months of the entry into force

of this Regulation, and shall indicate, in a clear, precise and specific manner, the

goods and services, other than those clearly covered by the literal meaning of the

indications of the class heading, originally covered by the proprietor’s intention. The

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 15, Article 42(2),

Article 51(1)(a), and Article 57(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.

10373/1/15 REV 1 vm 45

# DGG 3B EN

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

(b) the use of the trade mark in relation to those goods or services did not 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.’.

(29) Article 29 is amended as follows:

(a) in paragraph 5, the following sentence is added:

‘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 Commission determines that reciprocal treatment in

accordance with paragraph 1 is accorded, it shall publish a communication to that

effect in the _Official Journal of the European Union_ .’;

10373/1/15 REV 1 vm 46

# DGG 3B EN

(b) the following paragraphs are added:

‘6. Paragraph 5 shall apply from the date of publication in the _Official Journal of_

_the European Union_ of the communication determining that reciprocal

treatment 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 communication states an earlier date from which it is applicable.

7. Communications as referred to in paragraphs 5 and 6 shall also be published in

the Official Journal of the Office.’.

(30) Article 30 is replaced by the following:

_‘Article 30_

_Claiming priority_

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.

2. The Commission shall adopt implementing acts specifying the kind of

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 163(2).

10373/1/15 REV 1 vm 47

# DGG 3B EN

3. The Executive Director may determine that the documentation to be provided by the

applicant in support of the priority claim may consist of less than what is required

under the specifications adopted in accordance with paragraph 2, provided that the

information required is available to the Office from other sources.’.

(31) Article 33 is amended as follows:

(a) in paragraph 1, the following sentence is added:

‘The priority claim shall be filed together with the EU trade mark application.’;

(b) paragraph 2 is replaced by the following:

‘2. An applicant who wishes to claim priority pursuant to paragraph 1 shall file

evidence of the display of goods or services under the mark applied for within

three months of the filing date.’;

(c) the following paragraph is added:

‘4. The Commission shall adopt implementing acts specifying the type and 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 163(2).’.

10373/1/15 REV 1 vm 48

# DGG 3B EN

(32) Article 34 is amended as follows:

(a) the following paragraph is inserted:

‘1a 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

registered, 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

documentation 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.’;

(b) paragraph 3 is replaced by the following:

‘3. 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.’;

10373/1/15 REV 1 vm 49

# DGG 3B EN

(c) the following paragraphs are added:

‘4. The Office shall inform the Benelux Office for Intellectual Property or the

central industrial property office of the Member State concerned of the

effective claiming of seniority.

5. 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 1a of this Article. Those

implementing acts shall be adopted in accordance with the examination

procedure referred to in Article 163(2).

6. The Executive Director may determine that the documentation to be provided

by the applicant in support of the seniority claim may consist of less than what

is required under the specifications adopted in accordance with paragraph 5,

provided that the information required is available to the Office from other

sources.’.

10373/1/15 REV 1 vm 50

# DGG 3B EN

(33) Article 35 is amended as follows:

(a) paragraph 2 is replaced by the following:

‘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 34(5).’;

(b) the following paragraphs are added:

‘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 specified by the Office,

the Office shall reject the claim.

4. Article 34(2), (3), (4) and (6) shall apply.’.

10373/1/15 REV 1 vm 51

# DGG 3B EN

(34) Article 36 is amended as follows:

(a) point (b) of paragraph 1 is replaced by the following:

‘(b) the EU trade mark application complies with the conditions and requirements

referred to in Article 26(3).’;

(b) in paragraph 2 the words ‘within the prescribed period’ are replaced by ‘within two

months of the receipt of the notification’;

(c) in paragraph 5, the following sentence is added:

‘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 withdrawn with regard to those classes for

which the class fees have not been paid or have not been paid in full.’;

(d) the following paragraph is added:

‘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.’.

10373/1/15 REV 1 vm 52

# DGG 3B EN

(35) Article 37 is amended as follows:

(a) paragraph 2 is deleted;

(b) paragraph 3 is replaced by the following:

‘(3) The application shall not be refused before the applicant has been allowed the

opportunity to withdraw or amend the application or to submit his

observations. 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 registration in whole or in part.’.

(36) Article 38 is replaced by the following:

_‘Article 38_

_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 discovered which may be

invoked under Article 8 against the registration of the EU trade mark applied for.

10373/1/15 REV 1 vm 53

# DGG 3B EN

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.

3. Each of the central industrial property offices of the Member States referred to in

paragraph 2 of this Article 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.

4. The Office, after consulting the Management Board provided for in Article 124 (“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 by the office in accordance with paragraph 3. The amount,

which shall be the same for each office, shall be fixed by the Budget Committee by

means of a decision adopted by a majority of three-quarters of the representatives of

the Member States.

10373/1/15 REV 1 vm 54

# DGG 3B EN

6. The Office shall transmit to the applicant for the EU trade mark the EU 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 application. 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.’.

(37) Article 39 is amended as follows:

(a) paragraph 1 is replaced by the following:

‘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 41 to the extent that it has not been refused pursuant to Article 37.

The publication of the application shall be without prejudice to information

already made available to the public otherwise in accordance with this

Regulation or acts adopted pursuant to this Regulation.’;

(b) the following paragraphs are added:

‘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.

10373/1/15 REV 1 vm 55

# DGG 3B EN

The rules adopted pursuant to Article 43(3) shall apply _mutatis mutandis_ where

a correction is requested by the applicant.

4. Article 41(2) shall apply also 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 163(2).’.

(38) Article 40 is replaced by the following:

‘ _Article 40_

_Observations by third parties_

1. Any natural or legal person and any group or body representing manufacturers,

producers, suppliers of services, traders or consumers may submit to the Office

written observations, explaining on which grounds, under Articles 5 and 7, the trade

mark should not be registered _ex officio_ .

Persons and groups or bodies as referred to in the first subparagraph shall not be

parties to the proceedings before the Office.

2. Third party observations shall be submitted before the end of the opposition period

or, where an opposition against the trade mark has been filed, before the final

decision on the opposition is taken.

10373/1/15 REV 1 vm 56

# DGG 3B EN

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.

4. The observations referred to in paragraph 1 shall be communicated to the applicant

who may comment on them.’.

(39) Article 41 is amended as follows:

(a) in paragraph 1, the following point is added:

‘(d) by the persons authorised under the relevant Union legislation or national law

to exercise the rights referred to in Article 8(4a).’;

(b) paragraph 3 is replaced by the following:

‘3. Opposition shall be expressed in writing, and shall specify the grounds on

which it is made. It shall not be considered as duly entered until the opposition

fee has been paid.’;

(c) the following paragraph is added:

‘4. Within a period to be fixed by the Office, the opponent may submit facts,

evidence and arguments in support of his case.’.

10373/1/15 REV 1 vm 57

# DGG 3B EN

(40) In Article 42, paragraph 2 is replaced by the following:

‘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 reasons for non-use, provided 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 relation 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.’.

(41) The following article is inserted:

‘ _Article 42a_

_Delegation of powers_

The Commission shall be empowered to adopt delegated acts in accordance with

Article 163a specifying the details of the procedure for filing and examining an opposition

set out in Articles 41 and 42.’.

10373/1/15 REV 1 vm 58

# DGG 3B EN

(42) In Article 43, the following paragraph is added:

‘3. The Commission shall be empowered to adopt delegated acts in accordance with

Article 163a specifying the details of the procedure governing the amendment of the

application.’.

(43) Article 44 is amended as follows:

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

‘(b) before the date of filing referred to in Article 27 has been accorded by the

Office and during the opposition period provided for in Article 41(1).’;

(b) paragraph 3 is deleted;

(c) the following paragraph is inserted:

‘4a. 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.’;

10373/1/15 REV 1 vm 59

# DGG 3B EN

(d) the following paragraphs are added:

‘8. Where the declaration of division relates to an application which has already

been published pursuant to Article 39, the division shall be published. 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:

(a) the details to be contained in a declaration of the division of an

application made pursuant to paragraph 1;

(b) the details as to how to process a declaration of the division of an

application, ensuring that a separate file, including new application

number, is established for the divisional application;

(c) the details to be contained in the publication of the divisional application

pursuant to paragraph 8.

Those implementing acts shall be adopted in accordance with the examination

procedure referred to in Article 163(2).’.

10373/1/15 REV 1 vm 60

# DGG 3B EN

(44) Article 45 is replaced by the following:

‘ _Article 45_

_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 41(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 87(2)

shall be recorded in the Register. The registration shall be published.

2. The Office shall issue a certificate of registration. That certificate may 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.

3. The Commission shall adopt implementing acts specifying the details 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 163(2).’.

10373/1/15 REV 1 vm 61

# DGG 3B EN

(45) Article 47 is replaced by the following:

‘ _Article 47_

_Renewal_

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 person 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 when appropriate, 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.

10373/1/15 REV 1 vm 62

# DGG 3B EN

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;

(c) if the renewal is requested for only part of the registered goods and services, 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 renewal is not

requested, 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 classes of

that classification.

If the payment referred to in paragraph 3 is made, it shall be deemed to constitute 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.

10373/1/15 REV 1 vm 63

# DGG 3B EN

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 application 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 deficiencies found.

8. Where an application 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 deficiencies referred to in

paragraph 7 are not remedied within that period, the Office shall determine that the

registration has expired and shall notify the proprietor 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

day 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 application for renewal may be submitted for two or more marks, upon

payment of the required fees for each of the marks, provided that the proprietors or

the representatives are the same in each case.’.

10373/1/15 REV 1 vm 64

# DGG 3B EN

(46) Article 48 is amended as follows:

(a) paragraph 3 is replaced by the following:

‘3. The request for alteration shall include the element of the mark to be altered

and that element in its altered version.

The Commission shall adopt implementing acts specifying the details to be

contained in the request for alteration. Those implementing acts shall be

adopted in accordance with the examination procedure referred to in

Article 163(2).’;

(b) the following paragraphs are added:

‘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.

10373/1/15 REV 1 vm 65

# DGG 3B EN

5. The publication of the registration of the alteration shall contain a

representation of the EU trade mark as altered. Third parties whose rights may

be affected by the alteration may challenge the registration thereof within a

period of three months following publication. Articles 41 and 42, and rules

adopted pursuant to Article 42a shall apply to the publication of the registration

of the alteration.’.

(47) The following article is inserted:

‘ _Article 48a_

_Change of the name or address_

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 48(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.

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 163(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.

10373/1/15 REV 1 vm 66

# DGG 3B EN

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.

4. Paragraphs 1 to 3 shall also apply to a change of the name or address 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.’.

(48) Article 49 is amended as follows:

(a) paragraph 3 is replaced by the following:

‘3. If the requirements laid down in paragraph 1 and pursuant to the implementing

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 time period expires, the

Office shall refuse the declaration of division.’;

10373/1/15 REV 1 vm 67

# DGG 3B EN

(b) the following paragraph is added:

‘8. The Commission shall adopt implementing acts specifying:

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

pursuant to paragraph 1;

(b) the details as how to process a declaration of the division of a

registration, 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 163(2).’.

(49) Article 50 is amended as follows:

(a) paragraphs 2 and 3 are replaced by the following:

‘2. The surrender shall be declared to the Office in writing by the proprietor of the

trade mark. It shall not have effect until it has been entered in the Register. 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 56(1) shall be conditional upon the final rejection or

withdrawal of the application for revocation.

10373/1/15 REV 1 vm 68

# DGG 3B EN

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 a

three-month period after the date on which the proprietor satisfies the Office

that he 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.’;

(b) the following paragraphs are added:

‘4. If the requirements governing surrender are not fulfilled, the Office shall

communicate the deficiencies to the declarant. If the deficiencies are not

remedied 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 Article

and the kind of documentation required to establish a third party’s agreement

pursuant to paragraph 3 of this Article. Those implementing acts shall be

adopted in accordance with the examination procedure referred to in

Article 163(2).’.

10373/1/15 REV 1 vm 69

# DGG 3B EN

(50) In Article 53, paragraph 1 is amended as follows:

(a) the following point is added:

‘(d) where there is an earlier designation of origin or geographical indication as

referred to in Article 8(4a) and the conditions set out in that paragraph are

fulfilled.’;

(b) the following subparagraph is added:

‘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.’.

(51) In Article 54, paragraphs 1 and 2 are replaced by the following:

‘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 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

EU trade mark was applied for in bad faith.

10373/1/15 REV 1 vm 70

# DGG 3B EN

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 protected while being aware of such

use, he shall no longer be entitled on the basis of the earlier trade mark or of the other

earlier sign 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.’.

(52) Article 56 is amended as follows:

(a) in paragraph 1, point (c), the phrase ‘under the law of the Member State concerned’

is replaced by the phrase ‘under Union legislation or the law of the Member State

concerned’;

(b) paragraph 3 is replaced by the following:

‘3. An application for revocation or for a declaration of invalidity shall be

inadmissible where an application relating to the same subject matter and cause

of action, and involving the same parties, has been adjudicated on its merits,

either by the Office or by an EU trade mark court as referred to in Article 95,

and the decision of the Office or that court on that application has acquired the

authority of a final decision.’.

10373/1/15 REV 1 vm 71

# DGG 3B EN

(53) In Article 57, paragraph 2 is replaced by the following:

‘2. If the proprietor of the EU trade mark so requests, the proprietor of an 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 application 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 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 42(2) were satisfied at that date. In the absence of proof

to this effect, the application for a declaration of invalidity shall be rejected. If the

earlier 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.’.

10373/1/15 REV 1 vm 72

# DGG 3B EN

(54) The following article is inserted:

‘ _Article 57a_

_Delegation of powers_

The Commission shall be empowered to adopt delegated acts in accordance with

Article 163a specifying the details of the procedures governing the revocation and

invalidity of an EU trade mark referred to in Articles 56 and 57, as well as the transfer of

an EU trade mark registered in the name of an agent referred to in Article 18.’.

(55) In Article 58, paragraph 1 is replaced by the following:

‘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 130, 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 60. The filing of the appeal shall have

suspensive effect.’.

10373/1/15 REV 1 vm 73

# DGG 3B EN

(56) Article 60 is replaced by the following:

‘ _Article 60_

_Time limit and form of appeal_

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 statement 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.’.

(57) Article 62 is deleted.

(58) In Article 64, paragraph 3 is replaced by the following:

‘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 65(5) or, if an action has been brought before the

General Court within that period, as from the date of dismissal of such action or of

any appeal filed with the Court of Justice against the decision of the General Court.’.

10373/1/15 REV 1 vm 74

# DGG 3B EN

(59) Article 65 is amended as follows:

(a) paragraph 1 is replaced by the following:

‘1. Actions may be brought before the General Court against decisions of the

Boards of Appeal in relation to appeals.’;

(b) paragraph 3 is replaced by the following:

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

decision.’;

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

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

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

6. The Office shall take the necessary measures to comply with the judgment of

the General Court or, in the event of an appeal against that judgment, the Court

of Justice.’.

10373/1/15 REV 1 vm 75

# DGG 3B EN

(60) The following article is inserted:

‘ _Article 65a_

_Delegation of powers_

The Commission shall be empowered to adopt delegated acts in accordance with

Article 163 specifying:

(a) the formal content of the notice of appeal referred to in Article 60 and the procedure

for the filing and the examination of an appeal;

(b) the formal content and form of the Board of Appeal’s decisions as referred to in

Article 64;

(c) the reimbursement of the appeal fee as referred to in Article 60.’.

(61) The title of Title VIII is replaced by the following:

‘SPECIFIC PROVISIONS ON EUROPEAN UNION COLLECTIVE MARKS AND

CERTIFICATION MARKS’.

(62) The following section heading is inserted before Article 66:

‘SECTION 1

EU collective marks’.

10373/1/15 REV 1 vm 76

# DGG 3B EN

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

‘3. Titles I to VII and IX to XIV shall apply to EU collective marks to the extent that

this section does not provide otherwise.’.

(64) Article 67 is amended as follows:

(a) paragraph 1 is replaced by the following:

‘1. An applicant for an EU collective mark shall submit regulations governing its

use within two months of the date of filing.’;

(b) the following paragraph is added:

‘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

procedure referred to in Article 163(2).’.

(65) Article 69 is replaced by the following:

‘ _Article 69_

_Observations by third parties_

Where written observations on an EU collective mark are submitted to the Office pursuant

to Article 40, 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 68.’.

10373/1/15 REV 1 vm 77

# DGG 3B EN

(66) In Article 71, paragraph 3 is replaced by the following:

‘3. Written observations made in accordance with Article 69 may also be submitted with

regard to amended regulations governing use.’.

(67) In Title VIII, the following section is added:

‘SECTION 2

EU certification marks

_Article 74a_

_EU certification marks_

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. Titles I to VII and IX to XIV shall apply to EU certification marks to the extent that

this Section does not provide otherwise.

10373/1/15 REV 1 vm 78

# DGG 3B EN

_Article 74b_

_Regulations governing use of the EU certification mark_

1. An applicant for an EU certification mark shall submit regulations governing the use

of the 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 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 procedure referred to in

Article 163(2).

_Article 74c_

_Refusal of the application_

1. In addition to the grounds for refusal of an EU trade mark application provided for in

Articles 36 and 37, an application for an EU certification mark shall be refused

where the conditions set out in Articles 74a and 74b are not satisfied, or where the

regulations governing use are contrary to public policy or to accepted principles of

morality.

10373/1/15 REV 1 vm 79

# DGG 3B EN

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 certification mark.

3. An application shall not be refused if the applicant, as a result of an amendment of

the regulations governing use, meets the requirements of paragraphs 1 and 2.

_Article 74d_

_Observations by third parties_

Where written observations on an EU certification mark are submitted to the Office

pursuant to Article 40, 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 74c.

_Article 74e_

_Use of the EU certification mark_

Use of an EU certification mark by any person who has authority to use it according to the

regulations governing use referred to in Article 74b 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.

10373/1/15 REV 1 vm 80

# DGG 3B EN

_Article 74f_

_Amendment of the regulations governing use of the mark_

1. The proprietor of an EU certification mark shall submit to the Office any 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 74b or involve one of the grounds

for refusal referred to in Article 74c.

3. Written observations in accordance with Article 74d may also be submitted with

regard to amended regulations governing use.

4. For the purposes of this Regulation, amendments to the regulations governing use

shall take effect only from the date of entry of the mention of the amendment in the

Register.

_Article 74g_

_Transfer_

By way of derogation from Article 17(1), an EU certification mark may only be transferred

to a person who meets the requirements of Article 74a(2).

10373/1/15 REV 1 vm 81

# DGG 3B EN

_Article 74h_

_Persons who are entitled to bring an action for infringement_

1. Only the proprietor of an EU certification mark, or any person specifically authorised

by him to that effect, shall be entitled to bring an action for infringement.

2. The proprietor of an EU certification mark shall be entitled to claim compensation 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 74i_

_Grounds for revocation_

In addition to the grounds for revocation provided for in Article 51, 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:

(a) the proprietor no longer complies with the requirements set out in Article 74a(2);

(b) 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, amendments to which have, where appropriate, been mentioned in the

Register;

10373/1/15 REV 1 vm 82

# DGG 3B EN

(c) 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 74c(2);

(d) an amendment to the regulations governing use of the mark has been mentioned in

the Register in breach of Article 74f(2), unless the proprietor of the mark, by further

amending the regulations governing use, complies with the requirements of that

Article.

_Article 74j_

_Grounds for invalidity_

In addition to the grounds for invalidity provided for in Articles 52 and 53, an EU

certification mark which is registered in breach of Article 74c 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 Article 74c.

_Article 74k_

_Conversion_

Without prejudice to Article 112(2), conversion of an application for an EU certification

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 … **[+]** .’.

**+** OJ: Please insert the number for the Directive in doc st10374/15.

10373/1/15 REV 1 vm 83

# DGG 3B EN

(68) Article 75 is replaced by the following:

‘ _Article 75_

_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 decisions, 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 58, 59 and 60. The parties may not plead any failure on the part of

the Office to communicate the availability of appeal proceedings.’.

10373/1/15 REV 1 vm 84

# DGG 3B EN

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

‘In invalidity proceedings taken pursuant to Article 52, the Office shall limit its

examination to the grounds and arguments submitted by the parties.’.

(70) In Article 77, the following paragraph is added:

‘4. The Commission shall be empowered to adopt delegated acts in accordance with

Article 163a specifying the detailed arrangements for oral proceedings, including the

detailed arrangements for the use of languages in accordance with Article 119.’.

(71) Article 78 is amended as follows:

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

‘The period of notice provided in such summons shall be at least one month, unless

they agree to a shorter period.’;

(b) the following paragraphs are added:

‘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.

6. The Commission shall be empowered to adopt delegated acts in accordance

with Article 163a specifying the detailed arrangements for the taking of

evidence.’.

10373/1/15 REV 1 vm 85

# DGG 3B EN

(72) Article 79 is replaced by the following:

‘ _Article 79_

_Notification_

1. The Office shall, as a matter of course, notify those concerned of decisions and

summonses and of any notice or other communication from which a time-limit is

reckoned, or of which those concerned are to be notified under other provisions of

this Regulation or of acts adopted pursuant to this Regulation, or of which

notification has been ordered by the Executive Director.

2. The Executive Director may determine which documents other than decisions subject

to a time-limit for appeal and summonses shall be notified by registered letter with

advice of delivery.

3. Notification may be effected by 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.

5. The Commission shall be empowered to adopt delegated acts in accordance with

Article 163a specifying the detailed arrangements for notification.’.

10373/1/15 REV 1 vm 86

# DGG 3B EN

(73) The following articles are inserted:

‘ _Article 79a_

_Notification of loss of rights_

Where the Office finds that the loss of any rights results from this Regulation 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 79. 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.

_Article 79b_

_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.

2. The Commission shall be empowered to adopt delegated acts in accordance with

Article 163a 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.

10373/1/15 REV 1 vm 87

# DGG 3B EN

_Article 79c_

_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.

2. The Executive Director shall determine, before the commencement of 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.

3. The Executive Director shall determine the duration of the period of interruption in

the case of a general interruption in the delivery of post in the Member 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.

10373/1/15 REV 1 vm 88

# DGG 3B EN

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 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 business 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.

5. The Commission shall be empowered to adopt delegated acts in accordance with

Article 163a specifying the details regarding the calculation and duration of

time-limits.

_Article 79d_

_Correction of errors and manifest oversights_

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 registering the trade

mark or in publishing its registration of its own motion or at the request of a party.

10373/1/15 REV 1 vm 89

# DGG 3B EN

2. Where the correction of errors in the registration of the trade mark or the publication

of the registration is requested by the proprietor, Article 48a shall apply _mutatis_

_mutandis_ .

3. Corrections of errors in the registration of the trade mark and in the publication of the

registration shall be published by the Office.’.

(74) Article 80 is replaced by the following:

‘ _Article 80_

_Revocation of decisions_

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 determined, _ex_

_officio_ or at the request of one of the parties to the proceedings, by the department

which made the entry or took the decision. 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 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.

10373/1/15 REV 1 vm 90

# DGG 3B EN

3. The Commission shall be empowered to adopt delegated acts in accordance with

Article 163a 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 58 and 65, or to the possibility of correcting errors and manifest

oversights under Article 79d. 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.’.

(75) Article 82 is amended as follows:

(a) paragraph 2 is replaced by the following:

‘2. This Article shall not apply to the time-limits laid down in Article 27,

Articles 29(1), 33(1), 36(2), 41(1) and (3), 47(3), Article 60, Articles 65(5)

and 81(2), and Article 112, or to the time-limits laid down in paragraph 1 of

this Article or the time-limit for claiming seniority pursuant to Article 34 after

the application has been filed.’;

10373/1/15 REV 1 vm 91

# DGG 3B EN

(b) paragraph 4 is replaced by the following:

‘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

continuation of proceedings, the department competent to decide on the

omitted act shall review the decision and, where completion of the omitted act

itself is sufficient, take a different decision. If, following the review, the Office

concludes that the original decision does not require to be altered, it shall

confirm that decision in writing.’.

(76) The following Article is inserted:

‘ _Article 82a_

_Interruption of proceedings_

1. Proceedings before the Office shall be interrupted:

(a) in the event of the death or legal incapacity of the applicant for, or proprietor

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 93, proceedings shall

be interrupted only on application by such representative;

10373/1/15 REV 1 vm 92

# DGG 3B EN

(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.

2. Proceedings before the Office shall be resumed as soon as the identity of the person

authorised to continue them has been established.

3. The Commission shall be empowered to adopt delegated acts in accordance with

Article 163a specifying the detailed arrangements for the resumption of proceedings

before the Office.’.

(77) Article 83 is replaced by the following:

‘ _Article 83_

_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.’.

10373/1/15 REV 1 vm 93

# DGG 3B EN

(78) Article 85 is amended as follows:

(a) paragraph 1 is replaced by the following:

‘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 119(6), 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 93(1), within the limits of the

scales set for each category of costs in the implementing act to be adopted in

accordance with paragraph 1a 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.’;

(b) the following paragraph is inserted:

‘1a. The Commission shall adopt implementing acts specifying the maximum rates

for costs essential to the proceedings and actually incurred by the successful

party. Those implementing acts shall be adopted in accordance with the

examination procedure referred to in Article 163(2).

10373/1/15 REV 1 vm 94

# DGG 3B EN

When specifying such amounts with respect to travel and subsistence costs the

Commission shall take into account the distance between the place of residence

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 93(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. Subsistence

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 **[*]** . The losing party shall bear the costs for one opposing party only

and, where applicable, one representative only.

____________

***** 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 (OJ L 56, 4.3.1968, p. 1).’;

10373/1/15 REV 1 vm 95

# DGG 3B EN

(c) paragraph 6 is replaced by the following:

‘6. 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 5 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 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 93(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, representation costs shall

be awarded at the level laid down in the act adopted pursuant to paragraph 1a

of this Article and irrespective of whether they have been actually incurred.’;

10373/1/15 REV 1 vm 96

# DGG 3B EN

(d) the following paragraph is added:

‘7. The decision on the fixing of costs, stating the reasons on which it is 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.’.

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

‘Each Member State shall designate a single authority responsible for verifying the

authenticity of the decision 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

enforcement 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.’.

(80) Article 87 is replaced by the following:

‘ _Article 87_

_Register of EU trade marks_

1. The Office shall keep a Register of EU trade marks which it shall keep up to date.

10373/1/15 REV 1 vm 97

# DGG 3B EN

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

applications and registrations:

(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;

(e) the name and business address of the representative, other than a representative

as referred to in the first sentence of Article 92(3);

(f) the representation of the mark, with indications as to its nature; 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 30;

(i) particulars of claims of exhibition priority pursuant to Article 33;

(j) particulars of claims of seniority of a registered earlier trade mark as referred to

in Article 34;

(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);

10373/1/15 REV 1 vm 98

# DGG 3B EN

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

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

(n) the language in which the application was filed and the second language which

the applicant has indicated in his application, pursuant to Article 119(3);

(o) the date of registration of the mark in the Register and the registration number;

(p) a statement that the application is the result of a transformation of an

international registration designating the Union, pursuant to Article 161 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 3 _ter_ (2) of the Madrid Protocol was recorded and, where

applicable, the date of priority of the international registration.

3. The Register shall also contain the following entries, each accompanied by 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 92(3);

10373/1/15 REV 1 vm 99

# DGG 3B EN

(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 43 and 48, and

corrections of errors;

(e) notice of amendments to the regulations governing the use of the collective

mark pursuant to Article 71;

(f) particulars of claims of seniority of a registered earlier trade mark as referred to

in Article 34, pursuant to Article 35;

(g) total or partial transfers pursuant to Article 17;

(h) creation or transfer of a right in rem pursuant to Article 19, and the nature of

the right in rem;

(i) levy of execution pursuant to Article 20 and insolvency proceedings pursuant

to Article 21;

(j) grant or transfer of a licence pursuant to Article 22 and, where applicable, the

type of licence;

(k) renewal of a registration pursuant to Article 47, the date from which it takes

effect and any restrictions pursuant to Article 47(4);

10373/1/15 REV 1 vm 100

# DGG 3B EN

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

Article 47;

(m) declarations of withdrawal or surrender by the proprietor of the mark pursuant

to Articles 43 and 50 respectively;

(n) the date of submission and the particulars of an opposition pursuant to

Article 41, of an application pursuant to Article 56, or a counterclaim pursuant

to Article 100(4) for revocation, or for a declaration of invalidity, or of an

appeal pursuant to Article 60;

(o) the date and content of a decision on an opposition or an application or

counterclaim pursuant to Article 57(6) or the third sentence of Article 100(6) or

on an appeal pursuant to Article 64;

(p) a record of the receipt of a request for conversion pursuant to Article 113(2);

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

paragraph 2 of this Article;

(r) the cancellation of the seniority of a national mark;

(s) modifications to or cancellations from the Register of the items referred to in

points (h), (i) and (j);

10373/1/15 REV 1 vm 101

# DGG 3B EN

(t) the replacement of the EU trade mark by an international registration pursuant

to Article 157;

(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 148(1);

(v) the date and number of international registrations based on the EU trade mark

pursuant to Article 148(2);

(w) the division of an application pursuant to Article 44 and the division of a

registration pursuant to Article 49, together with the items referred to in

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 Article 80,

where the revocation concerns a decision or entry which has been published;

(y) notice of amendments to the regulations governing the use of the certification

mark pursuant to Article 74f.

4. The Executive Director may determine that items other than those referred to in

paragraphs 2 and 3 of this Article are to be entered in the Register, subject to

Article 123(4).

10373/1/15 REV 1 vm 102

# DGG 3B EN

5. The Register may be maintained in electronic form. The Office shall collect,

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 9. The Office shall keep

the register easily accessible for public inspection.

6. The proprietor of the EU trade mark shall be notified of any change in the Register.

7. The Office shall provide certified or uncertified extracts from the Register on request

and on payment of a fee.

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

and improve the functioning of the system.

10373/1/15 REV 1 vm 103

# DGG 3B EN

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.’.

(81) The following articles are inserted:

‘ _Article 87a_

_Database_

1. In addition to the obligation to keep a Register within the meaning of Article 87, the

Office shall collect and store in an electronic database all the particulars provided by

applicants or any other party to the proceedings under 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 87, to the extent that such particulars are required by this

Regulation or 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 acts adopted pursuant to it;

(b) accessing the information necessary for conducting the relevant proceedings

more easily and efficiently;

10373/1/15 REV 1 vm 104

# DGG 3B EN

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

(d) producing reports and statistics enabling the Office to optimise its operations

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 personal data referred

to in paragraph 2 of this Article but including those listed in Article 87, 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 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.

10373/1/15 REV 1 vm 105

# DGG 3B EN

_Article 87b_

_Online access to decisions_

1. The decisions of the Office shall be made available online for the information 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 decision 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.’.

(82) Article 88 is amended as follows:

(a) paragraph 4 is replaced by the following:

‘4. Where the files are inspected pursuant to paragraphs 2 or 3 of this Article,

documents relating to exclusion or objection pursuant to Article 137, draft

decisions 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 inspection 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 withheld from inspection.’;

10373/1/15 REV 1 vm 106

# DGG 3B EN

(b) the following paragraphs are added:

‘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 technical

means of storage if the files are stored in this way. The Executive Director

shall determine the means of inspection.

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

technical 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 designating

the Union may be inspected on request as from the date of publication referred

to in Article 152(1), in accordance with the conditions laid down in

paragraphs 1, 3 and 4 of this Article.

10373/1/15 REV 1 vm 107

# DGG 3B EN

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

information to be supplied.’.

(83) The following article is inserted:

‘ _Article 88a_

_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.

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.

10373/1/15 REV 1 vm 108

# DGG 3B EN

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 47, the complete surrender of the EU

trade mark is registered pursuant to Article 50, or the EU trade mark is completely

removed from the Register pursuant to Article 57(6) or Article 100(6).’.

(84) Article 89 is replaced by the following:

‘ _Article 89_

_Periodical publications_

1. The Office shall periodically publish:

(a) a European Union Trade Marks Bulletin containing publications of

applications 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

information 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.

10373/1/15 REV 1 vm 109

# DGG 3B EN

2. The European Union Trade Marks Bulletin shall be published in a manner 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:

(a) the date to be taken as the date of publication in the European Union 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;

(c) the forms in which editions of the Official Journal of the Office may be made

available to the public.

Those implementing acts shall be adopted in accordance with the examination

procedure referred to in Article 163(2).’.

(85) Article 90 is amended as follows:

(a) the number ‘1’ shall be inserted before the first paragraph;

10373/1/15 REV 1 vm 110

# DGG 3B EN

(b) the following paragraphs are added:

‘2. The Office shall not charge fees for the communication of information or 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 88,

when it is opened to third parties. Those implementing acts shall be adopted in

accordance with the examination procedure referred to in Article 163(2).’.

(86) In Article 92, paragraphs 2 to 4 are replaced by the following:

‘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 European Economic

Area shall be represented before the Office in accordance with Article 93(1) in all

proceedings provided for by this Regulation, other than the filing of an application

for an EU trade mark.

10373/1/15 REV 1 vm 111

# DGG 3B EN

3. Natural or legal persons having their domicile or principal place of business or a real

and effective industrial or commercial establishment in the European Economic Area

may be represented before the Office by an employee. An employee of a legal person

to which this paragraph applies may also represent other legal persons which have

economic connections with the first legal person, even if those other legal persons

have neither their domicile nor their principal place of business nor a real and

effective industrial or commercial establishment within the European Economic

Area. Employees who represent 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 acting in

common, a common representative shall be appointed.’.

(87) Article 93 is amended as follows:

(a) paragraphs 1 and 2 are replaced by the following:

‘1. Representation of natural or legal persons before the Office may only be

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 State, to

act as a representative in trade mark matters;

10373/1/15 REV 1 vm 112

# DGG 3B EN

(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;

(b) having his place of business or employment in the European Economic

Area;

10373/1/15 REV 1 vm 113

# DGG 3B EN

(c) being entitled to represent natural or legal persons in trade mark matters

before the Benelux Office for Intellectual Property or before the central

industrial 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.’;

(b) paragraphs 4 and 5 are replaced by the following:

‘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 paragraphs 2(b)

and (c) are fulfilled.

10373/1/15 REV 1 vm 114

# DGG 3B EN

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.’.

(88) The following article is inserted:

‘ _Article 93a_

_Delegation of powers_

The Commission shall be empowered to adopt delegated acts in accordance with

Article 163a specifying:

(a) the conditions and the procedure for the appointment of a common representative as

referred to in Article 92(4);

(b) the conditions under which employees referred to in Article 92(3) and professional

representatives referred to in Article 93(1) shall file with the Office a signed

authorisation in order to undertake representation, and the content of that

authorisation;

(c) the circumstances in which a person may be removed from the list of professional

representatives referred to in Article 93(5).’.

10373/1/15 REV 1 vm 115

# DGG 3B EN

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

‘Application of Union rules on jurisdiction and recognition and enforcement of judgments

in civil and commercial matters’.

(90) Article 94 is amended as follows:

(a) the title is replaced by the following:

‘Application of Union rules on jurisdiction and the recognition and enforcement of

judgments in civil and commercial matters’;

(b) in paragraph 1, ‘Regulation (EC) No 44/2001’ is replaced by ‘the Union rules on

jurisdiction and the recognition and enforcement of judgments in civil and

commercial matters’; and

(c) the following paragraph is added:

‘3. References in this Regulation to Regulation (EC) No 44/2001 shall include,

where appropriate, the Agreement between the European Community and the

Kingdom of Denmark on jurisdiction and the recognition and enforcement of

judgments in civil and commercial matters done on 19 October 2005.’.

(91) In Article 96(c), ‘Article 9(3), second sentence’ is replaced by ‘Article 9b(2)’.

10373/1/15 REV 1 vm 116

# DGG 3B EN

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

‘3. In the actions referred to in points (a) and (c) of Article 96, a plea relating 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 infringement action was brought.’.

(93) Article 100 is amended as follows:

(a) paragraph 4 is replaced by the following:

‘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

Article 104(1) until the decision on the application is final or the application is

withdrawn.’;

10373/1/15 REV 1 vm 117

# DGG 3B EN

(b) paragraph 6 is replaced by the following:

‘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.’.

(94) In Article 101, paragraph 2 is replaced by the following:

‘2. On all trade mark matters not covered by this Regulation, the relevant EU trade mark

court shall apply the applicable national law.’.

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

‘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.’.

(96) Article 108 is deleted.

10373/1/15 REV 1 vm 118

# DGG 3B EN

(97) Article 113 is replaced by the following:

‘ _Article 113_

_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 112(4), (5) or (6), and shall include an indication of the grounds

for conversion in accordance with Article 112(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 failure to renew the

registration, the period of three months provided for in Article 112(5) shall begin to

run on the day following the last day on which the request for renewal can be

presented pursuant to Article 47(3). The request for conversion 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 Register and the request for

conversion shall be published.

10373/1/15 REV 1 vm 119

# DGG 3B EN

3. The Office shall check whether the conversion requested fulfils the conditions set out

in this Regulation, in particular Article 112(1), (2), (4), (5) and (6), and paragraph 1

of this Article, together with the formal conditions 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 112(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 112(4),(5) or (6), the Office shall inform the applicant that the

request for conversion is deemed not to have been filed.

4. 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 by reference to the

language of a Member State, conversion shall be excluded under Article 112(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 112(2) for all

Member States.

10373/1/15 REV 1 vm 120

# DGG 3B EN

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 conversion and

the data referred to in Article 84(2) to the central industrial property 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;

(b) the details which are to be contained in the publication of the request for

conversion pursuant to paragraph 2.

Those implementing acts shall be adopted in accordance with the examination

procedure referred to in Article 163(2).’.

(98) In Article 114, paragraph 2 is replaced by the following:

‘2. An EU trade mark application or a European Union trade mark transmitted in

accordance with Article 113 shall not be subject to formal requirements of national

law which are different from or additional to those provided for in this Regulation or

in acts adopted pursuant to this Regulation.’.

10373/1/15 REV 1 vm 121

# DGG 3B EN

(99) In Article 115(1), the first sentence is replaced by the following:

‘The Office shall be an Agency of the Union.’.

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

‘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.’.

(101) In Article 117, the words ‘to the Office’ are replaced by ‘to the Office and its staff’.

(102) Article 119 is amended as follows:

(a) paragraph 5 is replaced by the following:

‘5. The notice of opposition and an application for revocation or a declaration of

invalidity shall be filed in one of the languages of the Office.’;

10373/1/15 REV 1 vm 122

# DGG 3B EN

(b) the following paragraph is inserted:

‘5a. 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 79b(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 languages of the Office, as far as textual elements are concerned.’;

(c) in the second subparagraph of paragraph 6,, the second sentence is replaced by the

following:

‘The translation shall be produced within one month of the expiry of the opposition

period or of the date of filing an application for revocation or a declaration of

invalidity.’;

10373/1/15 REV 1 vm 123

# DGG 3B EN

(d) the following paragraphs are added:

‘8. Without prejudice to paragraphs 4 and 7, 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

languages of the Office, the translation may also be filed in the second

language indicated by the applicant in his application.

9. The Executive Director shall determine the manner in which translations shall

be certified.

10. The Commission shall adopt implementing acts specifying:

(a) the extent to which supporting documents to be used in written

proceedings 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 163(2).’.

10373/1/15 REV 1 vm 124

# DGG 3B EN

(103) In Article 120(1), the words ‘the Implementing Regulation’ are replaced by ‘an act adopted

pursuant to this Regulation’.

(104) Article 122 is deleted.

(105) Article 123 is replaced by the following:

‘ _Article 123_

_Transparency_

1. Regulation (EC) No 1049/2001 of the European Parliament and of the Council **[*]** shall

apply to documents held by the Office.

2. The Management Board shall adopt detailed rules for applying Regulation (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 of the Treaty on the Functioning of the European Union

respectively.

10373/1/15 REV 1 vm 125

# DGG 3B EN

4. The processing of personal data by the Office shall be subject to Regulation (EC)

No 45/2001 of the European Parliament and of the Council **[**]** .

________________

      - 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).
** 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).’.

(106) The following article is inserted:

‘ _Article 123a_

_Security rules on the protection of classified and sensitive non-classified information_

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 [*]

and 2015/444 [**] . The security principles shall cover, inter alia, provisions for the exchange,

processing and storage of such information.

________________

      - Commission Decision (EU, Euratom) 2015/443 of 13 March 2015 on Security in the
Commission (OJ L 72, 17.3.2015, p. 41).
** Commission Decision (EU, Euratom) 2015/444 of 13 March 2015 on the security
rules for protecting EU classified information (OJ L72, 17.3.2015, p.53).’.

10373/1/15 REV 1 vm 126

# DGG 3B EN

(107) In Title XII, the following section is inserted:

‘SECTION 1a

Tasks of the Office and cooperation to promote convergence

_Article 123b_

_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 [*] ;

(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;

(d) the tasks referred to in Regulation (EU) No 386/2012 of the

European Parliament and of the Council [**] ;

(e) the tasks conferred on it under Directive 2012/28/EU [***] .

10373/1/15 REV 1 vm 127

# DGG 3B EN

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.

3. The Office may provide voluntary mediation services for the purpose of assisting

parties in reaching a friendly settlement.

_Article 123c_

_Cooperation to promote convergence of practices and tools_

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;

(b) the creation of common or connected databases and portals for Union-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);

10373/1/15 REV 1 vm 128

# DGG 3B EN

(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;

(e) the sharing of information on industrial property rights and procedures,

including mutual support to helpdesks and information centres;

(f) the exchange of technical expertise and assistance in relation to the areas

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 responsibilities 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 projects and evaluation

of their results.

3. The central industrial property offices of the Member States and the Benelux Office

for Intellectual Property may opt-out of, restrict or temporarily suspend their

cooperation in the projects referred to in the first subparagraph of paragraph 2.

10373/1/15 REV 1 vm 129

# DGG 3B EN

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 statement 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 effectively 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 European Parliament and of the Council [****] and in Commission delegated

Regulation (EU) No 1268/2012 [*****] .

10373/1/15 REV 1 vm 130

# DGG 3B EN

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 counterfeiting. 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_ .

________________

      - Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs
(OJ L 3, 5.1.2002, p. 1).
** 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).
*** 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).
**** 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).
***** Commission Delegated Regulation (EU) No 1268/2012 of 29 October 2012 on the
rules of application 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).’.

10373/1/15 REV 1 vm 131

# DGG 3B EN

(108) In Title XII, Sections 2 and 3 are replaced by the following:

‘SECTION 2

Management Board

_Article 124_

_Functions of the Management Board_

1. Without prejudice to the functions attributed to the Budget Committee in Section 5,

the Management Board shall have the following functions:

(a) on the basis of a draft submitted by the Executive Director in accordance with

Article 128(4)(c), adopting the annual work programme of the Office for the

coming year, taking into account the opinion of the Commission, and

forwarding 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 accordance with

Article 128(4)(e) and taking into account the opinion of the Commission,

adopting a multi-annual 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 multi-annual strategic

programme to the European Parliament, to the Council and to the Commission;

10373/1/15 REV 1 vm 132

# DGG 3B EN

(c) on the basis of a draft submitted by the Executive Director in accordance with

Article 128(4)(g), adopting the annual report and forwarding the adopted

annual report to the European Parliament, 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 128(4)(h), adopting the multiannual staff policy plan;

(e) exercising the powers conferred on it under Article 123c(2);

(f) exercising the powers conferred on it under Article 139(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 of Other Servants on the

Authority Empowered to Conclude Contracts of Employment (“the appointing

authority powers”);

(i) 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;

10373/1/15 REV 1 vm 133

# DGG 3B EN

(j) drawing up the list of candidates provided for in Article 129(2);

(k) ensuring adequate follow-up to the findings and recommendations stemming

from the internal or external audit reports and evaluations referred to in

Article 165a, as well as from investigations of the European Anti-fraud Office

(OLAF);

(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 142 of the Conditions of Employment of Other Servants, a decision

based on Article 2(1) of the Staff Regulations and on Article 6 of the Conditions of

Employment of Other Servants, delegating the relevant appointing authority powers

to the Executive Director and defining the conditions under which that delegation of

appointing authority powers can be suspended.

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

10373/1/15 REV 1 vm 134

# DGG 3B EN

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 125_

_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.

2. The members of the Management Board may, subject to its rules of procedure, be

assisted by advisers or experts.

_Article 126_

_Chairperson of the Management Board_

1. The Management Board shall elect a chairperson and a deputy chairperson from

among its members. The deputy chairperson shall _ex officio_ replace the chairperson

in the event of his being prevented from attending to his duties.

10373/1/15 REV 1 vm 135

# DGG 3B EN

2. The duration of the terms of office of the chairperson and the deputy chairperson

shall be four years. The terms of office shall be renewable once. If, however, their

membership of the Management Board ends at any time during their term of office,

their term of office shall automatically expire on that date also.

_Article 127_

_Meetings_

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

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

Board decides otherwise.

3. The Management Board shall hold an ordinary meeting 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 124(1)(a) and (b), Article 126(1) and Article 129(2) and (4). In both cases

each member shall have one vote.

10373/1/15 REV 1 vm 136

# DGG 3B EN

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

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

SECTION 3

Executive Director

_Article 128_

_Functions of the Executive Director_

1. The Office shall be managed by the Executive Director. The Executive Director shall

be accountable to the Management Board.

2. Without prejudice to the powers of the Commission, the Management Board, and the

Budget Committee, the Executive Director shall be independent in the performance

of his duties and shall neither seek nor take instructions from any government or

from any other body.

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

4. The Executive Director shall have in particular the following functions, which may

be delegated:

(a) taking all necessary steps, including the adoption of internal administrative

instructions and the publication of notices, to ensure the functioning of the

Office;

10373/1/15 REV 1 vm 137

# DGG 3B EN

(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 123c(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;

(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

investigations of the OLAF, and reporting on progress twice a year to the

Commission and to the Management Board;

10373/1/15 REV 1 vm 138

# DGG 3B EN

(j) protecting the financial interests of the Union by the application of preventive

measures against fraud, corruption and any other illegal activities, by effective

checks and, if irregularities are detected, by 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

decisions 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 Management

Board under Article 124(1)(h);

(o) exercising the powers conferred on him under Articles 26(3), 29(5), 30(3),

75(2), 78(5), Articles 79, 79b, 79c, Articles 87(4), 87a(3), 88(5), Articles 88a,

89, Articles 93(4), 119(9), Article 144, Articles 144a(1) and 144b(2), and

Article 144c in accordance with the criteria set out in this Regulation and in the

acts adopted pursuant to this Regulation.

10373/1/15 REV 1 vm 139

# DGG 3B EN

5. The Executive Director shall be assisted by one or more Deputy Executive Directors.

If the Executive Director is absent or indisposed, the Deputy Executive Director or

one of the Deputy Executive Directors shall replace him in accordance with the

procedure laid down by the Management Board.

_Article 129_

_Appointment and removal of the Executive Director and extension of term of office_

1. The Executive Director shall be engaged as a temporary agent of the Office under

Article 2(a) of the Conditions of Employment of Other Servants.

2. The Executive Director shall be appointed by the Council by simple majority, from a

list of candidates proposed by the Management Board, following an open and

transparent selection procedure. Before being appointed, the candidate selected by

the Management Board may be invited to make a statement before any competent

European Parliament committee and to answer questions put by its members. For the

purpose of concluding the contract with the Executive Director, the 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.

3. The term of office of the Executive Director shall be five years. By the end 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.

10373/1/15 REV 1 vm 140

# DGG 3B EN

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.

6. The Deputy Executive Director or Deputy Executive Directors shall be appointed or

removed from office as provided for in paragraph 2, after consultation of the

Executive Director and, where applicable, the Executive Director-elect. The term of

office of the Deputy Executive Director shall be five years. It may be extended once

and for no more than five years by the Council, after consultation of the Executive

Director.’.

(109) Article 130 is amended as follows:

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

‘(c) a department in charge of the Register;’;

(b) the following point is added:

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

(110) In Article 131, the reference to ‘Articles 36, 37 and 68’ is replaced by ‘Articles 36, 37, 68

and 74d’.

10373/1/15 REV 1 vm 141

# DGG 3B EN

(111) In Article 132, paragraph 2 is amended as follows:

(a) the third sentence is replaced by the following:

‘Decisions relating to costs or to procedure shall be taken by a single member.’;

(b) the following subparagraph is added:

‘The Commission shall adopt implementing acts specifying the exact types of

decisions that shall be taken by a single member. Those implementing acts shall be

adopted in accordance with the examination procedure referred to in Article 163(2).’.

(112) Article 133 is replaced by the following:

‘ _Article 133_

_Department in charge of the Register_

1. The Department in charge of the Register shall be responsible for taking decisions in

respect of entries in the Register.

2. It shall also be responsible for keeping the list of professional representatives

referred to in Article 93(2).

3. The decisions of the Department shall be taken by a single member.’.

10373/1/15 REV 1 vm 142

# DGG 3B EN

(113) Article 134 is amended as follows:

(a) paragraph 1 is replaced by the following:

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

(a) applications for the revocation or a declaration of invalidity of an EU

trade mark;

(b) requests for the assignment of an EU trade mark as provided for in

Article 18.’;

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

‘Decisions relating to costs or to procedure as specified in the acts adopted pursuant

to Article 132(2) shall be taken by a single member.’.

(114) The following article is inserted:

‘ _Article 134a_

_General Competence_

Decisions required under this Regulation which do not fall within the competence 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.’.

10373/1/15 REV 1 vm 143

# DGG 3B EN

(115) Article 135 is amended as follows:

(a) paragraph 1 is replaced by the following:

‘1. The Boards of Appeal shall be responsible for deciding on appeals from

decisions taken pursuant to Articles 131 to 134a.’;

(b) in paragraph 2, the words ‘by an enlarged Board’ are replaced by the words ‘by the

Grand Board’;

(c) paragraph 3 is replaced by the following:

‘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 importance

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 136(4)(a);

or

(b) by the Board handling the case.’;

(d) paragraph 4 is replaced by the following:

‘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 128(4)(l).’;

10373/1/15 REV 1 vm 144

# DGG 3B EN

(e) in paragraph 5, the last sentence is deleted.

(116) Article 136 is replaced by the following:

‘ _Article 136_

_Independence of the members of the Boards of Appeal_

1. The President of the Boards of Appeal and the chairpersons of the Boards shall be

appointed, in accordance with the procedure laid down in Article 129 for the

appointment of the Executive Director, for a term of five years. They shall not be

removed from office during this term, unless there are serious grounds for such

removal and the Court of Justice, on application by the institution which appointed

them, takes a decision to this effect.

2. The term of office of the President of the Boards of Appeal may be extended once

for one additional five-year period, or until retirement age if this age is reached

during the new term of office, after a prior positive evaluation of his performance by

the Management Board.

3. The term of office of the chairpersons of the Boards may be extended for additional

five-year periods, or until retirement age if this age is reached during the new term of

office, after a prior positive evaluation of their performance by the Management

Board, and after consulting the President of the Boards of Appeal.

10373/1/15 REV 1 vm 145

# DGG 3B EN

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

organisational functions:

(a) chairing the Presidium of the Boards of Appeal (“the Presidium”), responsible

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;

(d) forwarding to the Executive Director the Boards’ expenditure requirements,

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 Management Board

for a term of five years. Their term of office may be extended for additional five-year

periods, or until retirement age if that age is reached during the new term of office

after a prior positive evaluation of their performance by the Management Board, and

after consulting the President of the Boards of Appeal.

10373/1/15 REV 1 vm 146

# DGG 3B EN

6. The members of the Boards of Appeal shall not be removed from office unless there

are serious grounds for such removal and the Court of Justice, after the case has been

referred to it by the Management Board on the recommendation of the President of

the Boards of Appeal, 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 135 shall be binding on

the decision-making instances of the Office referred to in Article 130.

9. The President of the Boards of Appeal and the chairpersons and members of the

Boards of Appeal shall not be examiners or members of the Opposition Divisions,

the Department in charge of the Register or Cancellation Divisions.’.

10373/1/15 REV 1 vm 147

# DGG 3B EN

(117) The following article is inserted:

‘ _Article 136a_

_Presidium of the Boards of Appeal and Grand Board_

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 135(2) shall comprise nine members,

including the President of the Boards of Appeal, the chairmen of the Boards, the

rapporteur designated prior to referral to the Grand Board, if applicable, and

members drawn in rotation from a list comprising the names of all members of the

Boards of Appeal other than the President of the Boards of Appeal and the chairmen

of the Boards.’.

10373/1/15 REV 1 vm 148

# DGG 3B EN

(118) The following article is inserted:

‘ _Article 136b_

_Delegation of powers_

The Commission shall be empowered to adopt delegated acts in accordance with

Article 163a 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 135(2) and (5).’.

(119) The following article is inserted:

‘ _Article 137a_

_Mediation centre_

1. For the purposes of Article 123b(3), the Office may establish a Mediation Centre

(“the Centre”).

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 and

Regulation (EC) No 6/2002 by mutual agreement.

10373/1/15 REV 1 vm 149

# DGG 3B EN

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 144(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 application 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 language of

the mediation in question. Where the parties do not appoint a mediator within 20

days of the invitation to do so, the mediation shall be deemed to have failed.

7. The parties shall agree together with the mediator on the detailed arrangements for

the mediation in a mediation agreement.

10373/1/15 REV 1 vm 150

# DGG 3B EN

8. The mediator shall conclude the mediation proceedings as soon as the 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.

9. The mediator shall inform the parties as well as the relevant instance of 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 disputes pending before

the Office, the mediation shall be conducted in the language 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.

10373/1/15 REV 1 vm 151

# DGG 3B EN

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 130 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 130 in proceedings resumed as a consequence of a mediation

failure.

15. The Office may cooperate with other recognised national or international bodies

dealing with mediation.’.

(120) Article 138 is replaced by the following:

‘ _Article 138_

_Budget Committee_

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

10373/1/15 REV 1 vm 152

# DGG 3B EN

2. Articles 125 and 126 and Article 127(1) to (4) and (5), insofar as it relates to the

election of the chairperson and deputy chairperson, (6) and (7) shall apply to the

Budget Committee, _mutatis mutandis_ .

3. The Budget Committee shall take its decisions by an absolute majority of its

members. However, a majority of two-thirds of its members shall be required for the

decisions which the Budget Committee is empowered to take under Article 140(3)

and Article 143. In both cases each member shall have one vote.’.

(121) Article 139 is replaced by the following:

‘ _Article 139_

_Budget_

1. Estimates of all the Office’s revenue and expenditure shall be prepared for each

financial year and shall be shown in the Office’s budget. Each financial year shall

correspond with the calendar year.

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

10373/1/15 REV 1 vm 153

# DGG 3B EN

3. Revenue shall comprise, without prejudice to other types of income, total 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 referred to in

Article 145 of this Regulation, 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.

4. Every year the Office shall offset the costs incurred by the central industrial property

offices of the Member States, by the Benelux Office for Intellectual 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 procedures before the central industrial property

offices of the Member States and the Benelux Office for Intellectual Property

involving EU trade marks;

(b) provision of information on the functioning of the EU trade mark system

through helpdesks and information centres;

10373/1/15 REV 1 vm 154

# DGG 3B EN

(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 correspond 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 having consulted the Budget

Committee, the Management Board shall determine the distribution key on the basis

of the following fair, equitable and relevant indicators:

(a) the annual number of EU trade mark applications originating from applicants

in each Member State;

(b) the annual number of national trade mark applications in each Member State;

(c) the annual number of oppositions and applications for a declaration of

invalidity submitted by proprietors of EU trade marks in each Member State;

(d) the annual number of cases brought before the EU trade mark courts designated

by each Member State in accordance with Article 95.

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 subparagraph of this paragraph for

the preceding year, which shall be included in the proposal to be made to the

Management Board.

10373/1/15 REV 1 vm 155

# DGG 3B EN

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 case of a budgetary surplus, and without prejudice to paragraph 10, on a proposal

by the Office and after having consulted the Budget Committee, the Management

Board may increase the percentage laid down in paragraph 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 123b and 123c, 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 multi-annual strategic programme

referred to in Article 124(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 … **[+]** .

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 123c(5) and (6), and Article 139(5) and (7). On

the basis of that report, the Commission shall review the financial situation of the

Office.

**+** OJ: Please insert the date of the entry into force of this Regulation.

10373/1/15 REV 1 vm 156

# DGG 3B EN

10. The Office shall provide for a reserve fund covering one year of its operational

expenditure to ensure the continuity of its operations and the execution of its tasks.’.

(122) The following article is inserted:

‘ _Article 141a_

_Combating fraud_

1. In order to facilitate combating fraud, corruption and other unlawful activities under

Regulation (EU, Euratom) No 883/2013 of the European Parliament and of the

Council [*], the Office shall accede to the Inter-institutional Agreement of 25 May 1999

concerning internal investigations by the European Anti-fraud Office (OLAF), and

adopt the appropriate provisions applicable to all the employees of the Office using

the template set out in the Annex to that Agreement.

2. The European Court of Auditors shall have the power of audit, on the basis of

documents and on the spot, over all grant beneficiaries, contractors and

subcontractors who have received Union funds from the 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) No 2185/96 [**] with a

view to establishing whether there has been fraud, corruption or any other illegal

activity affecting the financial interests of the Union in connection with a grant or a

contract funded by the Office.

10373/1/15 REV 1 vm 157

# DGG 3B EN

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 empowering the European

Court of Auditors and OLAF to conduct such audits and investigations, in

accordance with their respective competences.

5. The Budget Committee shall adopt an anti-fraud strategy, which is proportionate to

the fraud risks having regard to the cost-benefit of the measures to be implemented.

_____________________

      - Regulation (EU, Euratom) No 883/2013 of the European Parliament and of the
Council of 11 September 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).
** 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’ financial interests against fraud and other irregularities
(OJ L 292, 15.11.1996, p. 2).’.

10373/1/15 REV 1 vm 158

# DGG 3B EN

(123) Article 144 is replaced by the following:

‘ _Article 144_

_Fees and charges and due date_

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 Official 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 determine

which of the services mentioned in the first subparagraph are not to be dependent

upon the advance payment of the corresponding fees or charges.’.

10373/1/15 REV 1 vm 159

# DGG 3B EN

(124) The following articles are inserted:

‘ _Article 144a_

_Payment of fees and charges_

1. Fees and charges due to the Office shall be paid by payment or transfer to a bank

account held by the Office.

With the consent of the Budget Committee, the Executive Director may establish

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 information shall be provided:

(a) when the application fee is paid, the purpose of the payment, namely

“application fee”;

10373/1/15 REV 1 vm 160

# DGG 3B EN

(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 immediately 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 144b_

_Deemed date of payment_

1. In the cases referred to in the first subparagraph of Article 144a(1), the 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.

10373/1/15 REV 1 vm 161

# DGG 3B EN

2. Where the methods of payment referred to in the second subparagraph of

Article 144a(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 establishment 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 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 is not paid in due time, the period for

payment shall be considered not to have been observed.

10373/1/15 REV 1 vm 162

# DGG 3B EN

_Article 144c_

_Insufficient payments and refund of insignificant amounts_

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 opportunity to pay the

amount lacking or, where this is considered justified, overlook any small amounts

lacking, without prejudice to the rights of the person making 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 determine the

amounts 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.’.

10373/1/15 REV 1 vm 163

# DGG 3B EN

(125) In Article 145, the words ‘its Implementing Regulations’ are replaced by ‘the acts adopted

pursuant to this Regulation’.

(126) Article 147 is amended as follows:

(a) in paragraph 1, the following sentence is inserted after the first sentence:

‘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.’;

(b) paragraphs 3 to 6 are replaced by the following:

‘3. Where the international application is filed in a language other than one of the

languages allowed under the Madrid Protocol for the filing of international

applications, the applicant may provide a translation of the list of goods or

services and of any other textual elements forming part of the international

application in the language in which the international application is to be

submitted 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.

10373/1/15 REV 1 vm 164

# DGG 3B EN

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:

(a) the international application has not been filed in the form referred to in

paragraph 1, and does not contain all the indications and information

required by that form;

(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;

10373/1/15 REV 1 vm 165

# DGG 3B EN

(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

accordance with Article 2(1)(ii) of the Madrid Protocol.

6. Where the applicant has failed to authorise the Office to include a translation 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.’;

(c) the following paragraphs are added:

‘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 application to the

International Bureau.

10373/1/15 REV 1 vm 166

# DGG 3B EN

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 146 of this Regulation.

9. The Commission shall adopt implementing acts specifying the exact form,

including 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 163(2).’.

(127) The following article is inserted:

‘ _Article 148a_

_Notification of the invalidity of the basic application or registration_

1. Within a period of five years of the date of the international registration, 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.

2. The Commission shall adopt implementing acts specifying the individual 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 163(2) of this Regulation.’.

10373/1/15 REV 1 vm 167

# DGG 3B EN

(128) Article 149 is replaced by the following:

‘ _Article 149_

_Request for territorial extension subsequent to international registration_

1. A request for territorial extension made subsequent to the international registration

pursuant to Article 3 _ter_ (2) of the Madrid Protocol may be filed through the

intermediary of the Office. The request shall be filed in the language in which the

international application was filed pursuant to Article 147 of this Regulation. It shall

include indications to substantiate the entitlement to make a designation in

accordance with Article 2(1)(ii) and Article 3 _ter_ (2) of the Madrid Protocol. The

Office shall inform the applicant requesting the territorial 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 paragraph 1 of this Article.

Those implementing acts shall be adopted in accordance with the examination

procedure referred to in Article 163(2).

10373/1/15 REV 1 vm 168

# DGG 3B EN

3. Where the request for territorial extension made subsequent to the international

registration does not comply with the requirements set out in paragraph 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.

4. The Office shall forward the request for territorial extension made subsequent to the

international registration to the International Bureau as soon as the requirements

referred to in paragraph 3 are complied with.’.

(129) Article 153 is replaced by the following:

‘ _Article 153_

_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 Benelux countries, or

registered under international arrangements having effect in a Member State, as

provided for in Article 34.

10373/1/15 REV 1 vm 169

# DGG 3B EN

2. The documentation, as specified in the implementing act adopted pursuant to

Article 34(5), in support of the seniority claim shall be submitted within three

months of the date on which the International Bureau notifies the international

registration to the Office. In this regard, Article 34(6) shall apply.

3. Where the holder of the international registration is obliged to be represented before

the Office pursuant to Article 92(2), the communication as referred to in paragraph 2

of this Article shall contain the appointment of a representative within the meaning

of Article 93(1).

4. Where the Office finds that the seniority claim under paragraph 1 of this Article does

not comply with Article 34, 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 satisfied 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 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 34(4) shall apply, unless the right of seniority is declared lost pursuant to

paragraph 4 of this Article.’.

10373/1/15 REV 1 vm 170

# DGG 3B EN

(130) The following article is inserted:

‘ _Article 153a_

_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 Article 152(2),

claim at the Office the seniority of an earlier trade mark registered in a

Member State, including a trade mark registered in the Benelux countries, or

registered under international arrangements having effect in a Member State, as

provided for in Article 35.

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. The seniority claim under paragraph 1 of this Article shall fulfil the requirements

referred to in Article 35 and shall contain information to enable its examination

against those requirements.

4. If the requirements governing the claiming of seniority referred to in paragraph 3 and

specified in the implementing act adopted pursuant to paragraph 6 are not fulfilled,

the Office shall invite the holder of the international registration to remedy the

deficiencies. If the deficiencies are not remedied within a period specified by the

Office, the Office shall reject the claim.

10373/1/15 REV 1 vm 171

# DGG 3B EN

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 163(2).’.

(131) Article 154 is replaced by the following:

‘ _Article 154_

_Designation of goods and services and examination as to absolute grounds for refusal_

1. International registrations designating the Union shall be subject to examination as to

their conformity with Article 28(2) to (4) and to absolute grounds for refusal in the

same way as applications for EU trade marks.

2. Where the international registration designating the Union is found to be ineligible

for protection pursuant to Article 28(4) or Article 37(1) of this Regulation for all or

any part of the goods and services for which it has been registered by the

International Bureau, the Office shall issue an _ex officio_ provisional notification of

refusal to the International Bureau, in accordance with Article 5(1) and (2) of the

Madrid Protocol.

10373/1/15 REV 1 vm 172

# DGG 3B EN

3. Where the holder of the international registration is obliged to be represented before

the Office pursuant to Article 92(2), the notification referred to in paragraph 2 of this

Article shall contain an invitation to appoint a representative within the meaning of

Article 93(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 representative. 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 161b of this

Regulation, the Office shall issue an _ex officio_ provisional notification of refusal to

the International Bureau pursuant to Article 5(1) and (2) of the Madrid Protocol.

6. Where the holder of the 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 international 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 58

to 65.

10373/1/15 REV 1 vm 173

# DGG 3B EN

7. Where, as of the start of the opposition period referred to in Article 156(2), the

Office has not issued an _ex officio_ provisional notification of refusal pursuant to

paragraph 2 of this Article, it shall send a statement to the International Bureau,

indicating that the examination of absolute grounds of refusal pursuant to Article 37

has been completed but that the international registration 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.

8. The Commission shall adopt implementing acts specifying the details to 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 procedure referred to in Article 163(2).’.

(132) The following article is inserted:

‘ _Article 154a_

_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.

10373/1/15 REV 1 vm 174

# DGG 3B EN

2. The holder of the international registration shall submit the regulations governing the

use of the mark, as provided for in Articles 67 and 74b, 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 shall be empowered to adopt delegated acts in accordance with

Article 163a specifying the details of the procedure concerning international

registrations based on a basic application or basic registration relating to a collective

mark, certification mark or guarantee mark.’.

(133) Article 155 is amended as follows:

(a) in paragraph 1, the following clause is added:

‘provided that a request for a search report pursuant to Article 38(1) is made to the

Office within one month of the date of notification.’;

(b) in paragraph 2, the following clause is added:

‘provided that a request for a search report pursuant to Article 38(2) is made to the

Office within one month of the date of notification and the search fee is paid within

the same period.’;

10373/1/15 REV 1 vm 175

# DGG 3B EN

(c) in paragraph 4, the following sentence is added:

‘This shall apply whether or not the holder of the international registration has

requested to receive the EU search report, unless the proprietor of an earlier

registration or application requests not to receive the notification.’.

(134) Article 156 is amended as follows:

(a) paragraph 2 is replaced by the following:

‘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 152(1). The opposition shall not be considered as duly entered until the

opposition fee has been paid.’;

(b) paragraph 4 is replaced by the following:

‘4. The Commission shall be empowered to adopt delegated acts in accordance

with Article 163a specifying the procedure for the filing and examination of an

opposition, including the necessary communications to be made to the

International Bureau.’.

10373/1/15 REV 1 vm 176

# DGG 3B EN

(135) In Article 158, the following paragraphs are added:

‘3. Where pursuant to Article 57 or Article 100 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 International 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 pursuant to paragraph 3 of

this Article. Those implementing acts shall be adopted in accordance with the

examination procedure referred to in Article 163(2).’.

(136) The following articles are inserted:

‘ _Article 158a_

_Legal effect of registration of transfers_

The recordal of a change in the ownership of the international registration on the

International Register shall have the same effect as the entry of a transfer in the Register

pursuant to Article 17.

10373/1/15 REV 1 vm 177

# DGG 3B EN

_Article 158b_

_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 the

international registration in the International Register shall have the same effect as the

registration of a right in rem, a levy of execution, insolvency proceedings or a licence in

the Register pursuant to Articles 19, 20, 21 and 22 respectively.

_Article 158c_

_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 cancellation of a licence or

the removal of a restriction of the holder’s right of disposal 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 disposal, 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.’.

10373/1/15 REV 1 vm 178

# DGG 3B EN

(137) Article 159 is amended as follows:

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

‘(b) into a designation of a Member State party to the Madrid Protocol, provided

that on the date when conversion was requested it was possible to have

designated that Member State directly under the Madrid Protocol. Articles 112,

113 and 114 of this Regulation shall apply.’;

(b) paragraph 2 is replaced by the following:

‘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 3 _ter_ (2) of the Madrid Protocol if the latter was made

subsequent to the international registration, or the date of priority of that

registration and, where appropriate, the seniority of a trade mark of that State

claimed under Article 153 of this Regulation.’;

(c) the following paragraphs are added:

‘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 113(1).

10373/1/15 REV 1 vm 179

# DGG 3B EN

5. Where conversion is requested pursuant to this Article and Article 112(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 has expired. The period of three

months provided for in Article 112(5) of this Regulation shall begin to run on

the day following the last day on which the renewal may still be effected

pursuant to Article 7(4) of the Madrid Protocol.

6. Article 113(3) and (5) shall apply to the request for conversion referred to in

paragraph 4 of this Article _mutatis mutandis_ .

7. The request for conversion of an international registration designating the

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 113(3) shall apply to the request for conversion referred to in

paragraph 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 application for conversion was received or, pursuant to the last

sentence of Article 113(1), is deemed to have been received by the Office.

10373/1/15 REV 1 vm 180

# DGG 3B EN

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:

(a) the details to be contained in the requests for conversion referred to in

paragraphs 4 and 7;

(b) the details to be contained in the publication of the requests for

conversion pursuant to paragraph 3.

Those implementing acts shall be adopted in accordance with the examination

procedure referred to in Article 163(2).’.

(138) In Article 161, the following paragraphs are added:

‘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 International Bureau

pursuant to Article 9 _quinquies_ 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.

10373/1/15 REV 1 vm 181

# DGG 3B EN

4. Where, in the course of the examination in accordance with Article 36(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 International 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 international 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 163(2).’.

(139) The following articles are inserted:

‘ _Article 161a_

_Communication with the International Bureau_

Communication with the International Bureau shall be in a manner and format agreed on

between the International Bureau and the Office, preferably by electronic means. Any

reference to forms shall be construed as including forms made available in electronic

format.

10373/1/15 REV 1 vm 182

# DGG 3B EN

_Article 161b_

_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 119(4),

and the second language indicated in the international application shall be the second

language within the meaning of Article 119(3).’.

(140) Article 162 is deleted.

(141) Article 163 is replaced by the following:

‘ _Article 163_

_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.’.

10373/1/15 REV 1 vm 183

# DGG 3B EN

(142) The following article is inserted:

‘ _Article 163a_

_Exercise of the delegation_

1. The power to adopt delegated acts is conferred on the Commission subject to the

conditions laid down in this Article.

2. The delegation of power referred to in Article 42a, Article 43(3), Articles 57a

and 65a, Article 77(4), 78(6), 79(5), 79b(2), 79c(5), 80(3), and 82a(3), Articles 93a

and 136b, and Articles 154a(3) and 156(4) shall be conferred on the Commission for

an indeterminate period of time from … **[+]** . It is of particular importance that the

Commission follow its usual practice and carry out consultations with experts,

including Member States’ experts, before adopting those delegated acts.

3. The delegation of power referred to in paragraph 2 may be revoked at any time by

the European Parliament or by the Council. A decision 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_

_European Union_ or at a later date specified therein. It shall not affect the validity of

any delegated acts already in force.

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

the European Parliament and to the Council.

**+** OJ: Please insert the date of entry into force of this Regulation.

10373/1/15 REV 1 vm 184

# DGG 3B EN

5. A delegated act adopted pursuant to Article 42a, Article 43(3), Articles 57a and 65a,

Articles 77(4), 78(6), 79(5), 79b(2), 79c(5), 80(3), and 82a(3), Articles 93a and 136b,

and Articles 154a(3) and 156(4) shall enter into force only if no objection has been

expressed either by the European Parliament or 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 2 months at the initiative of the European Parliament or the Council.’.

(143) Article 164 is deleted.

(144) The following article is inserted:

‘ _Article 165a_

_Evaluation and review_

1. By … **[+]**, 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 123c. The evaluation shall further assess the impact,

effectiveness and efficiency of the Office and its working 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.

**+** OJ: Please insert date: five years after the entry into force of this Regulation.

10373/1/15 REV 1 vm 185

# DGG 3B EN

3. The Commission shall forward the evaluation report together with its conclusions

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.’;

(145) The Annex set out in Annex I to this Regulation is inserted.

_Article 2_

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

(1) Rule 1(3) is deleted;

(2) Rule 2 is deleted;

(3) Rule 4 is deleted;

(4) Rule 5 is deleted;

(5) Rule 5a is deleted;

(6) Rule 9(3) is amended as follows:

(a) in point (a), the words ‘Rules 1, 2 and 3’ are replaced by the words ‘Rules 1 and 3

and Article 28 of the Regulation’;

10373/1/15 REV 1 vm 186

# DGG 3B EN

(b) in point (b), the reference to ‘Rule 4(b)’ is replaced by a reference to ‘Article 26(2)

of the Regulation’;

(7) Rule 11(2) is deleted;

(8) Rule 12(k) is deleted;

(9) Title IV is deleted;

(10) In Title XI, Part K is deleted;

(11) In paragraph 2 of Rule 62, the words ‘in the Community’ are replaced by ‘in the European

Economic Area’;

(12) In paragraph 1 of Rule 71, the words ‘in the Community’ are replaced by ‘in the European

Economic Area’;

(13) Rule 76(2) is deleted;

(14) Rule 78 is amended as follows:

(a) in point (c) of paragraph 2, the words ‘in the Community’ are replaced by ‘in the

European Economic Area’;

(b) in paragraphs (2)(b), (3) and (5), the words ‘Member State’ and ‘Member States’ are

replaced by ‘Member State of the European Economic Area’ and ‘Member States of

the European Economic Area’ respectively;

10373/1/15 REV 1 vm 187

# DGG 3B EN

(15) Rule 84 is deleted;

(16) Rule 87 is deleted;

(17) Rule 112(2) is deleted.

Regulation (EC) No 2869/95 is repealed.

_Article 3_

References to the repealed Regulation shall be construed as references to Regulation (EC)

No 207/2009 and shall be read in accordance with the correlation table set out in Annex II.

_Article 4_

This Regulation shall enter into force on … **[+]** .

**+** OJ: Please insert date: 90 days after the publication of this Regulation in the _Official Journal_
_of the European Union_ .

10373/1/15 REV 1 vm 188

# DGG 3B EN

The following points of Article 1 of this Regulation shall apply from … **[+]** :

points (8); (18); (19); (20); (21); (22); (23); (24); (26) insofar as it relates to paragraph 1, point (d),

and paragraph 3 of Article 26 of Regulation (EC) No 207/2009; (29); (30) insofar it relates to

paragraphs 1 and 3 of Article 30 of Regulation (EC) No 207/2009; (31) insofar as it relates to

paragraphs 1 and 2 of Article 33 of Regulation (EC) No 207/2009; (32) insofar as it relates to

paragraphs 1a, 4 and 6 of Article 34 of Regulation (EC) No 207/2009; (33); (34); (35) insofar as it

relates to paragraph 3 of Article 37 of Regulation (EC) No 207/2009; (37) insofar as it relates to

paragraph 1, second sentence, and paragraphs 3 and 4 of Article 39 of Regulation (EC)

No 207/2009; (43) insofar as it relates to paragraphs 2, 3, 4a and 8 of Article 44 of Regulation (EC)

No 207/2009; (46) insofar as it relates to paragraph 5, third sentence of Article 48 of Regulation

(EC) No 207/2009; (47) insofar as it relates to paragraph 1, first subparagraph, and paragraphs 2

to 5 of Article 48a of Regulation (EC) No 207/2009; (48) insofar as it relates to paragraph 3 of

Article 49 of Regulation (EC) No 207/2009; (49) insofar as it relates to paragraphs 2, 3 and 4 of

Article 50 of Regulation (EC) No 207/2009; (61); (62); (63); (64) insofar as it relates to paragraph 1

of Article 67 of Regulation (EC) No 207/2009; (67) with the exception of paragraph 3 of

Article 74b of Regulation (EC) No 207/2009; (68); (71) insofar as it relates to paragraphs 3 and 5 of

Article 78 of Regulation (EC) No 207/2009; (72) insofar as it relates to paragraphs 1 to 4 of

Article 79 of Regulation (EC) No 207/2009; (73) with the exception of paragraph 2 of Article 79b

of Regulation (EC) No 207/2009, and paragraph 5 of Article 79c of Regulation (EC) No 207/2009;

**+** OJ: Please insert date: the first day of the first month after 18 months following the date of
entry into force of this Regulation.

10373/1/15 REV 1 vm 189

# DGG 3B EN

(74) insofar as it relates to paragraphs 1, 2 and 4 of Article 80 of Regulation (EC) No 207/2009;

(75) insofar as it relates to paragraph 2 of Article 82 of Regulation (EC) No 207/2009; (76) insofar

as it relates to paragraphs 1 and 2 of Article 82a of Regulation (EC) No 207/2009; (77), (78) insofar

as it relates to paragraphs 1, 6 and 7 of Article 85 of Regulation (EC) No 207/2009; (80) insofar as

it relates to point (m) of paragraph 2 and point (y) of paragraph 3 of Article 87 of Regulation (EC)

No 207/2009; (84) insofar as it relates to paragraphs 1, 2 and 3 of Article 89 of Regulation (EC)

No 207/2009; (97) with the exception of paragraph 6 of Article 113 of Regulation (EC)

No 207/2009; (98); (102) insofar as it relates to paragraphs 5, 5a, 6, 8 and 9 of Article 119 of

Regulation (EC) No 207/2009; (103); (108) insofar as it relates to Article 128(4)(o) of Regulation

(EC) No 207/2009; (111) insofar as it relates to the third sentence in paragraph 2 of Article 132 of

Regulation (EC) No 207/2009; (113); (125); (126) insofar as it relates to paragraphs 1 and 3 to 8 of

Article 147 of Regulation (EC) No 207/2009; (127) insofar as it relates to paragraph 1 of

Article 148a of Regulation (EC) No 207/2009; (128) insofar as it relates to paragraphs 1, 3 and 4 of

Article 149 of Regulation (EC) No 207/2009; (129) insofar as it relates to Article 153 of Regulation

(EC) No 207/2009; (130) insofar as it relates to paragraphs 1 to 5 of Article 153a of Regulation

(EC) No 207/2009; (132); (135) insofar as it relates to paragraph 3 of Article 158 of Regulation

(EC) No 207/2009; (136); (137) insofar as it relates to paragraphs 4 to 9 of Article 159 of

Regulation (EC) No 207/2009; (138) insofar as it relates to paragraphs 3 to 5 of Article 161 of

Regulation (EC) No 207/2009; and (139).

10373/1/15 REV 1 vm 190

# DGG 3B EN

Point (99) of Article 1 of this Regulation, insofar as it relates to Articles 124(1)(f) and 128(4)(n) of

Regulation (EC) No 207/2009, shall apply from the date on which the decision provided for in

Article 124(2) of Regulation (EC) No 207/2009 enters into force, or 12 months following the date

specified in the second paragraph of this Article, whichever is earlier. Until that date, the powers

referred to in Article 124(1)(f) of Regulation (EC) No 207/2009 shall be exercised by the Executive

Director.

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

Done at …,

_For the European Parliament_ _For the Council_

_The President_ _The President_

10373/1/15 REV 1 vm 191

# DGG 3B EN

**ANNEX I**

The following annex is inserted:

‘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 26(2)):

EUR 1 000

2. Basic fee for the application for an individual EU trade mark by electronic means

(Article 26(2)):

EUR 850

3. Fee for the second class of goods and services for an individual EU trade mark

(Article 26(2)):

EUR 50

4. Fee for each class of goods and services exceeding two for an individual EU trade mark

(Article 26(2)):

EUR 150

10373/1/15 REV 1 vm 1

# ANNEX I DGG 3B EN

5. Basic fee for the application for an EU collective mark or an EU certification mark

(Article 26(2) and Article 66(3) or Article 74a(3)):

EUR 1 800

6. Basic fee for the application for an EU collective mark or an EU certification mark by

electronic means (Article 26(2) and Article 66(3) or Article 74a(3)):

EUR 1 500

7. Fee for the second class of goods and services for an EU collective mark or an EU

certification mark: (Article 26(2) and Article 66(3) or Article 74a(3)):

EUR 50

8. Fee for each class of goods and services exceeding two for an EU collective mark or an EU

certification mark (Article 26(2) and 66(3) or Article 74a(3)):

EUR 150

9. Search fee for an EU trade mark application (Article 38(2)) or for an international

registration designating the Union (Article 38(2) and Article 155(2)): 12 EUR multiplied

by the number of central industrial property offices referred to in Article 38(2); that

amount, and the subsequent changes, shall be published by the Office in the Official

Journal of the Office.

10. Opposition fee (Article 41(3)):

EUR 320

10373/1/15 REV 1 vm 2

# ANNEX I DGG 3B EN

11. Basic fee for the renewal of an individual EU trade mark (Article 47(3)):

EUR 1 000

12. Basic fee for the renewal of an individual EU trade mark by electronic means

(Article 47(3)):

EUR 850

13. Fee for the renewal of the second class of goods and services for an individual EU trade

mark (Article 47(3)):

EUR 50

14. Fee for the renewal of each class of goods and services exceeding two for an individual EU

trade mark (Article 47(3)):

EUR 150

15. Basic fee for the renewal of an EU collective mark or an EU certification mark

(Article 47(3) and Article 66(3) or Article 74a(3):

EUR 1 800

16. Basic fee for the renewal of an EU collective mark or an EU certification mark by

electronic means (Article 47(3) and Article 66(3) or Article 74a(3)):

EUR 1 500

17. Fee for the renewal of the second class of goods and services for an EU collective mark or

an EU certification mark (Article 47(3) and Article 66(3) or Article 74a(3)):

EUR 50

10373/1/15 REV 1 vm 3

# ANNEX I DGG 3B EN

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 47(3) and Article 66(3) or Article 74a(3)):

EUR 150

19. Additional fee for the late payment of the renewal fee or the late submission of the request

for renewal (Article 47(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 56(2)):

EUR 630

21. Appeal fee (Article 60(1)):

EUR 720

22. Fee for the application of restitutio in integrum (Article 81(3)):

EUR 200

23. Fee for the application for the conversion of an EU trade mark application or an EU trade

mark (Article 113(1), also in conjunction with Article 159(1)):

(a) into a national trade mark application,

(b) into a designation of Member States under the Madrid Protocol:

EUR 200

10373/1/15 REV 1 vm 4

# ANNEX I DGG 3B EN

24. Fee for continuation of proceedings (Article 82(1)):

EUR 400

25. Fee for the declaration of division of a registered EU trade mark (Article 49(4) or an

application for an EU trade mark (Article 44(4)):

EUR 250

26. Fee for the application for the registration of a licence or another right in respect of a

registered EU trade mark (before … **[+]**, Rule 33(2) of Regulation (EC) No 2868/95; and

from that date, Article 22a(2)) or an application for an EU trade mark (before … **[+]**,

Rule 33(2) of Regulation (EC) No 2868/95; and from that date, Article 22a(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 1000

**+** OJ: Please insert date: the first day of the first month after 18 months following the date of
entry into force of this Regulation.

10373/1/15 REV 1 vm 5

# ANNEX I DGG 3B EN

27. Fee for the cancellation of the registration of a licence or other right (before … **[+]**,

Rule 35(3) of Regulation (EC) No 2868/95; and from that date, Article 24a(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 48(4)):

EUR 200

29. Fee for the issue of a copy of the application for an EU trade mark (Article 88(7)), a copy

of the certificate of registration (Article (45(2)), or an extract from the register

(Article 87(7)):

(a) uncertified copy or extract:

EUR 10

(b) certified copy or extract:

EUR 30

30. Fee for the inspection of the files (Article 88(6)):

EUR 30

31. Fee for the issue of copies of file documents (Article 88(7)):

(a) uncertified copy:

EUR 10

**+** OJ: Please insert date: the first day of the first month after 18 months following the date of
entry into force of this Regulation.

10373/1/15 REV 1 vm 6

# ANNEX I DGG 3B EN

(b) certified copy:

EUR 30

plus per page, exceeding 10

EUR 1

32. Fee for the communication of information in a file (Article 88(9)):

EUR 10

33. Fee for the review of the determination of the procedural costs to be refunded

(before … **[+]**, Rule 94(4) of Regulation (EC) No 2868/95; and from that date, Article 85(7)):

EUR 100

34. Fee for the filing of an international application at the Office (before … **[+]**, Article 147(5);

and from that date, Article 147(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.

**+** OJ: Please insert date: the first day of the first month after 18 months following the date of
entry into force of this Regulation.

10373/1/15 REV 1 vm 7

# ANNEX I DGG 3B EN

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 designation of the Union in

accordance with Article 8(7) of the Madrid Protocol.

3. The amount of the fee under 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:

(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 or services exceeding two.

II. Individual fee for a renewal of an international registration designating the 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.

10373/1/15 REV 1 vm 8

# ANNEX I DGG 3B EN

2. The amount of the fee referred to in 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 1400 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.’

10373/1/15 REV 1 vm 9

# ANNEX I DGG 3B EN

**ANNEX II**

Correlation table

|Commission Regulation (EC) No 2869/95|Regulation (EC) No 207/2009|
|---|---|
|Article 1<br>Article 2<br>Article 3<br>Article 4<br>Article 5(1)<br>Article 5(2)<br>Article 5(3)<br>Article 6<br>Article 7(1)<br>Article 7(2)<br>Article 8<br>Article 9<br>Article 10<br>Article 11<br>Article 12<br>Article 13<br>Article 14<br>Article 15|− <br>Annex -I, Part A, points 1 to 34<br>Article 144(1)<br>Article 144(2)<br>Article 144a(1), first subparagraph<br>Article 144a(1), second subparagraph<br>Article 144a(1), third subparagraph<br>Article 144a(1), fourth subparagraph<br>Article 144a(2)<br>Article 144a(3)<br>Article 144b<br>Article 144c(1) and (2)<br>Article 144c(4)<br>Annex -I, Part B(I), points 1 to 3<br>Annex -I, Part B(II), points 1 and 2<br>− <br>− <br>−|

10373/1/15 REV 1 vm 1

# ANNEX II DGG 3B EN