Source: EURLEX
Language: en
Format: md

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

**Interinstitutional File:**

**2016/0345 (COD)**

**PROPOSAL**

**Brussels, 8 November 2016**
**(OR. en)**

**14137/16**

**CODIF 40**
**CODEC 1596**
**MI 686**
**PI 126**

From: Secretary-General of the European Commission,
signed by Mr Jordi AYET PUIGARNAU, Director

date of receipt: 31 October 2016

To: Mr Jeppe TRANHOLM-MIKKELSEN, Secretary-General of the Council of
the European Union

No. Cion doc.: COM(2016) 702 final

Subject: Proposal for a REGULATION OF THE EUROPEAN PARLIAMENT AND
OF THE COUNCIL on the European Union trade mark (codification)

Delegations will find attached document COM(2016) 702 final.

Delegations are invited to send their comments on the codification proposal by 5 December 2016 to

the following addresses:

SECRETARIAT.Codification@consilium.europa.eu **AND** [sj-codification@ec.europa.eu](mailto:sj-codification@ec.europa.eu)

Delegation's attention is drawn to the Practical Guide on Codification (doc. 14722/14 + COR1 of 24
October 2014).

Encl.: COM(2016) 702 final

14137/16

## **EN**

EUROPEAN

COMMISSION

Brussels, 31.10.2016
COM(2016) 702 final

2016/0345 (COD)

Proposal for a

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

**on the European Union trade mark (codification)**

(Text with EEA relevance)

# **EN EN**

**EXPLANATORY MEMORANDUM**

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

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

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

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

3. The Conclusions of the Presidency of the Edinburgh European Council
(December 1992) confirmed this [2], stressing the importance of codification as it
offers certainty as to the law applicable to a given matter at a given time.

Codification must be undertaken in full compliance with the normal procedure for
the adoption of acts of the Union.

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

4. The purpose of this proposal is to undertake a codification of Council
Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade
mark [3] . The new Regulation will supersede the various acts incorporated in it [4] ; this
proposal fully preserves the content of the acts being codified and hence does no
more than bring them together with only such formal amendments as are required by
the codification exercise itself.

5. The codification proposal was drawn up on the basis of a preliminary consolidation,
in 24 official languages, of Regulation (EC) No 207/2009 and the instruments
amending it, carried out by the Publications Office of the European Union, by means
of a data-processing system. Where the Articles have been given new numbers, the
correlation between the old and the new numbers is shown in a table set out in
Annex III to the codified Regulation.

1 COM(87) 868 PV.
2 See Annex 3 to Part A of the Conclusions.
3 Entered in the legislative programme for 2016.
4 See Annex II to this proposal.

# EN 2 EN

 207/2009 (adapted)
 1 2424/2015 Art. 1.1
 2 2424/2015 Art. 1.5
2016/0345 (COD)

Proposal for a

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

**on the**  **1** **European Union trade mark**  **(codification)**

(Text with EEA relevance)

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty  on the Functioning of  the  European   2 Union ,
and in particular  the first paragraph of  Article  118  thereof,

Having regard to the proposal from the European Commission,

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

Having regard to the opinion of the European Economic and Social Committee [5],

Acting in accordance with the ordinary legislative procedure,

Whereas:

 207/2009 recital 1 (adapted)

(1) Council Regulation (EC) No  207/2009  [6] has been substantially amended
several times [7] . In the interests of clarity and rationality,  that  Regulation should
be codified.

 2424/2015 recital 1 (adapted)

(2) Council Regulation (EC) No 40/94 [8], which was codified in 2009 as Regulation (EC)
No 207/2009, created a system of trade mark protection specific to the Union which
provided for the protection of trade marks at the level of the Union, in parallel to the

5 OJ C […], […], p. […].
6 Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark
(OJ L 78, 24.3.2009, p. 1).
7 See Annex I.
8 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ L 11,
14.1.1994, p. 1).

# EN 3 EN

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 [9], which
was codified as Directive 2008/95/EC of the European Parliament and of the
Council [10] .

 207/2009 recital 2 (adapted)
 1 2424/2015 Art. 1.5

(3) It is desirable to promote throughout the  1 Union  a harmonious development of
economic activities and a continuous and balanced expansion by completing an
internal market which functions properly and offers conditions which are similar to
those obtaining in a national market. In order to  establish  a market of this kind
and make it increasingly a single market, not only  should  barriers to free
movement of goods and services be removed and arrangements be instituted which
ensure that competition is not distorted, but, in addition, legal conditions
 should  be  laid down  which enable undertakings to adapt their activities
to the scale of the  1 Union , whether in manufacturing and distributing goods or
in providing services. For those purposes, trade marks enabling the products and
services of undertakings to be distinguished by identical means throughout the entire
 1 Union , regardless of frontiers, should feature amongst the legal instruments
which undertakings have at their disposal.

 207/2009 recital 3
 1 2424/2015 Art. 1.5
 2 2424/2015 Art. 1.2

(4) For the purpose of pursuing the  1 Union  's said objectives it would appear
necessary to provide for  1 Union  arrangements for trade marks whereby
undertakings can by means of one procedural system obtain  2 EU trade marks  to
which uniform protection is given and which produce their effects throughout the
entire area of the  1 Union  . The principle of the unitary character of the
 2 EU trade mark  thus stated should apply unless otherwise provided for in this
Regulation.

 207/2009 recital 4 (adapted)
 1 2424/2015 Art. 1.5

(5) The barrier of territoriality of the rights conferred on proprietors of trade marks by the
laws of the Member States cannot be removed by approximation of laws. In order to
open up unrestricted economic activity in the whole of the internal market for the
benefit of undertakings,  it should be possible to register  trade marks which are
governed by a uniform  1 Union  law directly applicable in all Member States.

9 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).
10 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).

# EN 4 EN

 2424/2015 recital 5

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

 207/2009 recital 6 (adapted)
 1 2424/2015 Art. 1.5
 2 2424/2015 Art. 1.2

(7) The  1 Union  law relating to trade marks nevertheless does not replace the laws of
the Member States on trade marks. It would not in fact appear to be justified to require
undertakings to apply for registration of their trade marks as  2 EU trade marks  .

 2424/2015 recital 6 (adapted)

(8) National trade marks continue to be necessary for those undertakings which do not
want protection of their trade marks at Union level, or which are unable to obtain
Union-wide protection while national protection does not face any obstacles. It should
be left to each person seeking trade mark protection to 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.

 207/2009 recital 7
 1 2424/2015 Art. 1.2

(9) The rights in an  1 EU trade mark  should not be obtained otherwise than by
registration, and registration should be refused in particular if the trade mark is not
distinctive, if it is unlawful or if it conflicts with earlier rights.

 2424/2015 recital 9 (adapted)

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

 207/2009 recital 8
 1 2424/2015 Art. 1.2

(11) The protection afforded by an  1 EU trade mark , the function of which is in
particular to guarantee the trade mark as an indication of origin, should be absolute in
the case of identity between the mark and the sign and the goods or services. The
protection should apply also in cases of similarity between the mark and the sign and
the goods or services. An interpretation should be given of the concept of similarity in
relation to the likelihood of confusion. The likelihood of confusion, the appreciation of
which depends on numerous elements and, in particular, on the recognition of the
trade mark on the market, the association which can be made with the used or

# EN 5 EN

registered sign, the degree of similarity between the trade mark and the sign and
between the goods or services identified, should constitute the specific condition for
such protection.

 2424/2015 (adapted)

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

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

(14) In order to ensure legal certainty and full consistency with specific Union legislation,
it is appropriate to provide that the proprietor of an EU trade mark should be entitled
to prohibit a third party from using a sign in comparative advertising where such
comparative advertising is contrary to Directive 2006/114/EC of the European
Parliament and of the Council [11] .

(15) In order to  ensure  trade mark protection and combat counterfeiting effectively,
and in line with international obligations of the Union under the framework of the
World Trade Organisation (WTO), in particular Article V of the General Agreement
on Tariffs and Trade (GATT) on freedom of transit and, as regards generic medicines,
the ‘Declaration on the TRIPS Agreement and 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.

(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 [12], also at the request of the right holders. In

11 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).
12 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).

# EN 6 EN

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.

(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 effectively,
they should be entitled to prohibit the affixing of an infringing mark to goods and
preparatory acts carried out prior to the affixing.

(21) The exclusive rights conferred by an EU trade mark should not entitle the proprietor to
prohibit the use of signs or indications by third parties which are used fairly and thus
in accordance with honest practices in industrial and commercial matters. In order to
 ensure  equal conditions for trade names and EU trade marks in the event of
conflicts, given that trade names are regularly granted unrestricted protection against
later trade marks, such use should be only considered to include the use of the personal
name of the third party. It should further permit the use of descriptive or nondistinctive 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.

# EN 7 EN

 207/2009 recital 9 (adapted)
 1 2424/2015 Art. 1.2

(22) It follows from the principle of free movement of goods that the proprietor of
an  1 EU trade mark  must not be entitled to prohibit its use by a third party in
relation to goods which have been put into circulation in the  European Economic
Area , under the trade mark, by him or with his consent, save where there exist
legitimate reasons for the proprietor to oppose further commercialisation of the goods.

 2424/2015 recital 22

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

 207/2009 recital 10
 1 2424/2015 Art. 1.2

(24) There is no justification for protecting  1 EU trade marks  or, as against them, any
trade mark which has been registered before them, except where the trade marks are
actually used.

 2424/2015 recital 23

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

 207/2009 recital 11 (adapted)
 1 2424/2015 Art. 1.2

(26) An  1 EU trade mark  is to be regarded as an object of property which exists
separately from the undertakings whose goods or services are designated by it.
Accordingly, it should be capable of being transferred, of being charged as security in
favour of a third party and of being the subject matter of licences.

 207/2009 recital 12 (adapted)
 1 2424/2015 Art. 1.5

(27) Administrative measures are necessary at  1 Union  level for implementing in
relation to every trade mark the trade mark law  laid down  by this Regulation. It
is therefore essential, while retaining the  1 Union  's existing institutional structure
and balance of powers, to provide for a  European Union Intellectual Property
Office (‘the Office’)  which is independent in relation to technical matters and has
legal, administrative and financial autonomy. To this end it is necessary and

# EN 8 EN

appropriate that  the  Office should be a body of the  1 Union  having legal
personality and exercising the powers which are conferred on it by this Regulation,
and that it should operate within the framework of  1 Union  law without
detracting from the competencies exercised by the  1 Union  institutions.

 2424/2015 recital 25 (adapted)

(28) 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
proprietor. It is therefore essential to  lay down  rules for the designation and
classification of goods and services in  this  Regulation and to ensure legal
certainty and sound administration by requiring that the goods and services for which
trade mark protection is sought are identified by the applicant with sufficient clarity
and precision to enable the competent 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 only including all goods and services clearly
covered by the literal meaning of the term. Proprietors of EU trade marks, which
because of the practice of the Office  prior to 22 June 2012 were  registered in
respect of the entire heading of a class of the  system of classification established
by the Nice Agreement Concerning the International Classification of Goods and
Services for the Purposes of the Registration of Marks of 15 June 1957 , should be
given the possibility to adapt their lists of goods and services in order to ensure that
the content of the Register meets the requisite standard of clarity and precision in
accordance with the case law of the Court of Justice of the European Union.

 2424/2015 recital 26 (adapted)

(29)  In order to avoid unnecessary delays in registering an EU trade mark,  it is
appropriate to  lay down a  regime of  optional  EU and national trade
mark searches  that should be  flexible in terms of user needs and preferences.
The optional EU and national trade mark searches should be complemented by the
making available of all-encompassing, fast and powerful search engines for the use of
the public free of charge within the context of cooperation between the Office and the
central industrial property offices of the Member States, including the Benelux Office
for Intellectual Property.

 207/2009 recital 13 (adapted)

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

# EN 9 EN

 207/2009 recital 15 (adapted)
 1 2424/2015 Art. 1.2

(31) In order to  ensure  the protection of  1 EU trade marks  the Member States
should designate, having regard to their own national system, as limited a number as
possible of national courts of first and second instance having jurisdiction in matters of
infringement and validity of  1 EU trade marks  .

 207/2009 recital 16
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.5

(32) Decisions regarding the validity and infringement of  1 EU trade marks  must have
effect and cover the entire area of the  2 Union , as this is the only way of
preventing inconsistent decisions on the part of the courts and the Office and of
ensuring that the unitary character of  1 EU trade marks  is not undermined. The
provisions of Regulation (EU) No 1215/2012 of the European Parliament and of the
Council [13] should apply to all actions at law relating to  1 EU trade marks , save
where this Regulation derogates from those rules.

 207/2009 recital 17
 1 2424/2015 Art. 1.2

(33) Contradictory judgments should be avoided in actions which involve the same acts and
the same parties and which are brought on the basis of an  1 EU trade mark  and
parallel national trade marks. For this purpose, when the actions are brought in the
same Member State, the way in which this is to be achieved is a matter for national
procedural rules, which are not prejudiced by this Regulation, whilst when the actions
are brought in different Member States, provisions modelled on the rules on
_lis pendens_ and related actions of Regulation (EU) No 1215/2012 appear appropriate.

 2424/2015 recital 30

(34) 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.

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

# EN 10 EN

 2424/2015 recital 33

(35) 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.

 2424/2015 recital 34

(36) 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 proceedings involving EU trade marks or brought by proprietors of such
trade marks; to the awareness-raising activities linked to the EU trade mark system; as
well as to activities intended to ensure the enforcement of EU trade mark rights. It is,
therefore, appropriate to ensure that the Office offset part of the costs incurred by
Member States for the role they play in ensuring the smooth functioning of
the EU trade mark system. The payment of such offsetting should be subject to the
submission, by Member States, of relevant statistical data. The offsetting of costs
should not be of such an extent that it would cause a budgetary deficit for the Office.

 207/2009 recital 18
 1 2424/2015 Art. 1.5

(37) In order to guarantee the full autonomy and independence of the Office, it is
considered necessary to grant it an autonomous budget whose revenue comes
principally from fees paid by the users of the system. However, the  1 Union 
budgetary procedure remains applicable as far as any subsidies chargeable to the
general budget of the  1 Union  are concerned. Moreover, the auditing of accounts
should be undertaken by the Court of Auditors.

 2424/2015 recital 35

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

 2424/2015 recital 36 (adapted)

(39) Given the essential importance of the amounts of fees payable to the Office for the
functioning of the EU trade mark system and its complementary relationship as
regards national trade mark systems, it is necessary to set those fee amounts directly in
 this  Regulation in the form of an annex. The amounts of the fees should be
fixed at a level which ensures that: first, the revenue they produce is in principle
sufficient for the budget of the Office to be balanced; second, there is coexistence and
complementarity between the EU trade mark and the national trade mark systems, also

# EN 11 EN

taking into account the size of the market covered by the EU trade mark and the needs
of small and medium-sized enterprises; and third, the rights of proprietors of an EU
trade mark are enforced efficiently in the Member States.

 2424/2015 recital 39 (adapted)

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

 2424/2015 recital 40 (adapted)

(41) 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 acts in accordance with Article 290 TFEU should be
delegated to the Commission in respect of specifying the procedures for revocation
and declaration of invalidity.

 2424/2015 recital 41 (adapted)

(42) 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  this  Regulation,
the power to adopt acts in accordance with Article 290 TFEU should be delegated to
the Commission in respect of specifying the formal content of the notice of appeal, the
procedure for the filing and examination of an appeal, the formal content and form of
the Board of Appeal's decisions, and the reimbursement of the appeal fees.

 2424/2015 recital 42 (adapted)

(43) In order to ensure a smooth, effective and efficient operation of the EU trade mark
system, the power to adopt acts in accordance with Article 290 TFEU should be
delegated to the Commission in respect of specifying the requirements as to the details
on oral proceedings and the detailed 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.

 2424/2015 recital 43 (adapted)

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

# EN 12 EN

 2424/2015 recital 44 (adapted)

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

 2424/2015 recital 38 (adapted)

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

 2424/2015 recital 45

(47) 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 [14] .

 2424/2015 recital 46

(48) Since the objectives of this Regulation cannot be sufficiently achieved by the Member
States but can rather, by reason of its scale and effects, be better achieved at Union

14 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).

# EN 13 EN

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,

 207/2009

HAVE ADOPTED THIS REGULATION:

### **CHAPTER I** **GENERAL PROVISIONS**

_Article 1_

 2424/2015 Art. 1.2

**EU trade mark**

 207/2009 (adapted)
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.5

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

2. An  1 EU trade mark  shall have a unitary character. It shall have equal effect
throughout the  2 Union  : it shall not be registered, transferred or surrendered or be the
subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its
use be prohibited, save in respect of the whole  2 Union  . This principle shall apply unless
otherwise provided  for  in this Regulation.

 2424/2015 Art. 1.7 (adapted)

_Article 2_

**Office**

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

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

# EN 14 EN

 207/2009
 1 2424/2015 Art. 1.2

_Article 3_

**Capacity to act**

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

### **CHAPTER II** **THE LAW RELATING TO TRADE MARKS**

#### **SECTION 1** D EFINITION OF AN  1 EU TRADE MARK  AND OBTAINING AN  1 EU TRADE MARK 

 2424/2015 Art. 1.8

_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.

# EN 15 EN

 207/2009
 1 2424/2015 Art. 1.2

_Article 5_

**Persons who can be proprietors of**  **1** **EU trade marks** 

Any natural or legal person, including authorities established under public law, may be the
proprietor of an  1 EU trade mark  .

_Article 6_

**Means whereby an**  **1** **EU trade mark**  **is obtained**

An  1 EU trade mark  shall be obtained by registration.

_Article 7_

**Absolute grounds for refusal**

1. The following shall not be registered:

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

(b) trade marks which are devoid of any distinctive character;

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

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

 2424/2015 Art. 1.9(a)

(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;

# EN 16 EN

 207/2009

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

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

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

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

 2424/2015 Art. 1.9(b)

(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;

 2424/2015 Art. 1.9(c)

(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.

 207/2009 (adapted)
 1 2424/2015 Art. 1.5
 2 2424/2015 Art. 1.2

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

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

# EN 17 EN

_Article 8_

**Relative grounds for refusal**

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

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

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

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

(a) trade marks of the following kinds with a date of application for registration which is
earlier than the date of application for registration of the  2 EU trade mark ,
taking account, where appropriate, of the priorities claimed in respect of those trade
marks:

(i)  2 EU trade marks  ;

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

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

(iv) trade marks registered under international arrangements which have effect in
the  1 Union  ;

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

(c) trade marks which, on the date of application for registration of the  2 EU trade
mark , or, where appropriate, of the priority claimed in respect of the application
for registration of the  2 EU trade mark , are well known in a Member State, in
the sense in which the words ‘well known’ are used in Article 6 _bis_ of the Paris

Convention.

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

# EN 18 EN

4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in
the course of trade of more than mere local significance, the trade mark applied for shall not
be registered where and to the extent that, pursuant to  1 Union  legislation or the law of
the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the
 2 EU trade mark , or the date of the priority claimed for the application for
registration of the  2 EU trade mark  ;

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

 2424/2015 Art. 1.10(a)

5. 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.

 2424/2015 Art. 1.10(b)

6. 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.

# EN 19 EN

 207/2009
 1 2424/2015 Art. 1.2

#### **SECTION 2** E FFECTS OF  1 EU TRADE MARKS 

 2424/2015 Art. 1.11

_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.

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;

(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;

# EN 20 EN

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

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

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

 2424/2015 Art. 1.12

_Article 10_

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

Where the risk exists that the packaging, labels, tags, security or authenticity features or
devices or any other means to which the mark is affixed could be used in relation to goods or
services and such use would constitute an 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 to which the
mark may be affixed;

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

_Article 11_

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

# EN 21 EN

 207/2009
 1 2424/2015 Art. 1.2

_Article 12_

**Reproduction of**  **1** **EU trade marks**  **in dictionaries**

If the reproduction of an  1 EU trade mark  in a dictionary, encyclopaedia or similar
reference work gives the impression that it constitutes the generic name of the goods or
services for which the trade mark is registered, the publisher of the work shall, at the request
of the proprietor of the  1 EU trade mark , ensure that the reproduction of the trade mark
at the latest in the next edition of the publication is accompanied by an indication that it is a
registered trade mark.

_Article 13_

**Prohibition on the use of an**  **1** **EU trade mark**  **registered in the name of an agent**
**or representative**

Where an  1 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 oppose the use of his mark by his agent or representative if he has
not authorised such use, unless the agent or representative justifies his action.

 2424/2015 Art. 1.13

_Article 14_

**Limitation of the effects of an EU trade mark**

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

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

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

# EN 22 EN

 207/2009
 1 2424/2015 Art. 1.2

_Article 15_

**Exhaustion of the rights conferred by an**  **1** **EU trade mark** 

 2424/2015 Art. 1.14

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.

 207/2009

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

 2424/2015 Art. 1.15

_Article 16_

**Intervening right of the proprietor of a later registered trade mark as a 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 60(1), (3) or (4), Article 61(1) or (2), or Article 64(2) of
this Regulation.

2. In infringement proceedings, the proprietor of an EU trade mark shall not be entitled to
prohibit the use of a later registered national trade mark where that later registered national
trade mark would not be declared invalid pursuant to Article 8, or Article 9(1) or (2), or
Article 46(3) of Directive (EU) 2015/2436 of the European Parliament and of the Council [15] .

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.

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

# EN 23 EN

 207/2009
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.5

_Article 17_

**Complementary application of national law relating to infringement**

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

2. This Regulation shall not prevent actions concerning an  1 EU trade mark  being
brought under the law of Member States relating in particular to civil liability and unfair
competition.

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

#### **SECTION 3** U SE OF  1 EU TRADE MARKS 

_Article 18_

**Use of**  **1** **EU trade marks** 

1. If, within a period of five years following registration, the proprietor has not put the
 1 EU trade mark  to genuine use in the  2 Union  in connection with the goods or
services in respect of which it is registered, or if such use has been suspended during an
uninterrupted period of five years, the  1 EU trade mark  shall be subject to the sanctions
provided for in this Regulation, unless there are proper reasons for non-use.

 2424/2015 Art. 1.16

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.

# EN 24 EN

 207/2009
 1 2424/2015 Art. 1.2

2. Use of the  1 EU trade mark  with the consent of the proprietor shall be deemed to
constitute use by the proprietor.

#### **SECTION 4**  1 EU TRADE MARKS  AS OBJECTS OF PROPERTY

_Article 19_

**Dealing with**  **1** **EU trade marks**  **as national trade marks**

 2424/2015 Art. 1.17

1. Unless Articles 20 to 28 provide otherwise, an EU trade mark as an object of property shall
be dealt with in its entirety, and for the whole area of the Union, as a national trade mark
registered in the Member State in which, according to the Register:

 207/2009 (adapted)
 1 2424/2015 Art. 1.2

(a) the proprietor has his seat or his domicile on the relevant date;

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

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

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

_Article 20_

**Transfer**

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

2. A transfer of the whole of the undertaking shall include the transfer of the  1 EU trade
mark  except where, in accordance with the law governing the transfer, there is agreement
to the contrary or circumstances clearly dictate otherwise. This provision shall apply to the
contractual obligation to transfer the undertaking.

# EN 25 EN

3. Without prejudice to paragraph 2, an assignment of the  1 EU trade mark  shall be
made in writing and shall require the signature of the parties to the contract, except when it is
a result of a judgment; otherwise it shall be void.

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

 2424/2015 Art. 1.18(b)

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

6. The Commission shall adopt implementing acts specifying:

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

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

(c) the details of how to process applications for partial transfers, ensuring that the goods
and services in the remaining registration and the new 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 207(2).

7. Where the conditions applicable to the registration of a transfer, as laid down in
paragraphs 1, 2 and 3, or in the implementing acts referred to in paragraph 6, 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, it shall reject the application for registration of
the transfer.

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

case.

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

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

# EN 26 EN

 207/2009
 1 2424/2015 Art. 1.2

11. As long as the transfer has not been entered in the Register, the successor in title may not
invoke the rights arising from the registration of the  1 EU trade mark  .

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

13. All documents which require notification to the proprietor of the  1 EU trade mark  in
accordance with Article 98 shall be addressed to the person registered as proprietor.

 2424/2015 Art. 1.19

_Article 21_

**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 60(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 123, instead of a counterclaim for a declaration of invalidity based on
Article 128(1).

 207/2009
 1 2424/2015 Art. 1.2

_Article 22_

**Rights** _**in rem**_

1. An  1 EU trade mark  may, independently of the undertaking, be given as security or be
the subject of rights _in rem_ .

 2424/2015 Art. 1.20(a)

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.

# EN 27 EN

 2424/2015 Art. 1.20(b)

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

 207/2009
 1 2424/2015 Art. 1.2

_Article 23_

**Levy of execution**

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

2. As regards the procedure for levy of execution in respect of an  1 EU trade mark , the
courts and authorities of the Member States determined in accordance with Article 19 shall
have exclusive jurisdiction.

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

 2424/2015 Art. 1.21

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

 207/2009 (adapted)
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.5

_Article 24_

**Insolvency proceedings**

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

However, where the debtor is an insurance undertaking or a credit institution as defined in
Directive 2009/138/EC of the European Parliament and of the Council [16] and
Directive 2001/24/EC of the European Parliament and of the Council [17], respectively, the only
insolvency proceedings in which an  1 EU trade mark  may be involved are those opened
in the Member State where that undertaking or institution has been authorised.

16 Directive 2009/138/EC of the European Parliament and of the Council of 25 November 2009 on the
taking-up and pursuit of the business of Insurance and Reinsurance (OJ L 335, 17.12.2009, p. 1).
17 Directive 2001/24/EC of the European Parliament and of the Council of 4 April 2001 on the
reorganisation and winding up of credit institutions (OJ L 125, 5.5.2001, p. 15).

# EN 28 EN

2. In the case of joint proprietorship of an  1 EU trade mark , paragraph 1 shall apply to
the share of the joint proprietor.

3. Where an  1 EU trade mark  is involved in insolvency proceedings, on request of the
competent national authority an entry to this effect shall be made in the Register and
published in the  1  European Union  Trade Marks  Bulletin referred to in
Article 116.

_Article 25_

**Licensing**

1. An  1 EU trade mark  may be licensed for some or all of the goods or services for
which it is registered and for the whole or part of the  2 Union  . A licence may be
exclusive or non-exclusive.

2. The proprietor of an  1 EU trade mark  may invoke the rights conferred by that trade
mark against a licensee who contravenes any provision in his licensing contract with regard

to:

(a) its duration;

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

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

(d) the territory in which the trade mark may be affixed; or

(e) the quality of the goods manufactured or of the services provided by the licensee.

3. Without prejudice to the provisions of the licensing contract, the licensee may bring
proceedings for infringement of an  1 EU trade mark  only if its proprietor consents
thereto. However, the holder of an exclusive licence may bring such proceedings if the
proprietor of the trade mark, after formal notice, does not himself bring infringement
proceedings within an appropriate period.

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

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

 2424/2015 Art. 1.22

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

# EN 29 EN

 2424/2015 Art. 1.23 (adapted)

_Article 26_

**Procedure for entering licences and other rights in the Register**

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

(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;

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

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

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

(e) a temporary licence.

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

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

# EN 30 EN

 207/2009 (adapted)
 1 2424/2015 Art. 1.2

_Article 27_

**Effects vis-à-vis third parties**

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

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

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

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

_Article 28_

**The application for an**  **1** **EU trade mark**  **as an object of property**

Articles 19 to 27 shall apply to applications for  1 EU trade marks  .

 2424/2015 Art. 1.24

_Article 29_

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

1. A registration effected under Article 26(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.

# EN 31 EN

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 to be 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 26(5).

 207/2009
 1 2424/2015 Art. 1.2

### **CHAPTER III** APPLICATION FOR  1 EU TRADE MARKS 

#### **SECTION 1** **F ILING OF APPLICATIONS AND THE CONDITIONS WHICH GOVERN THEM**

 2424/2015 Art. 1.25

_Article 30_

**Filing of applications**

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

2. The Office shall issue to the applicant, without delay, a receipt which shall include at least
the file number, a representation, description or other 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.

# EN 32 EN

 207/2009
 1 2424/2015 Art. 1.2

_Article 31_

**Conditions with which applications must comply**

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

(a) a request for the registration of an  1 EU trade mark  ;

(b) information identifying the applicant;

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

 2424/2015 Art. 1.26(a)

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

 2424/2015 Art. 1.26(b)

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.

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.

 2424/2015 Art. 1.26(c)

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

 2424/2015 Art. 1.27

_Article 32_

**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 31(1) are filed with the Office by the applicant,
subject to payment of the application fee within one month of filing those documents.

# EN 33 EN

 2424/2015 Art. 1.28

_Article 33_

**Designation and classification of goods and services**

1. Goods and services in respect of which trade mark registration is applied for shall be
classified in conformity with the system of classification 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.

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

The declaration shall be filed at the Office by 24 September 2016, and shall indicate, in a
clear, precise and specific manner, the goods and services, other than those clearly covered by
the literal meaning of the indications of the class heading, originally covered by the
proprietor's intention. The Office shall take appropriate measures to amend the Register

# EN 34 EN

accordingly. The possibility to make a declaration in accordance with the first subparagraph
of this paragraph shall be without prejudice to the application of Article 18, Article 47(2),
Article 58(1)(a), and Article 64(2).

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

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

(a) commenced before the register was amended; and

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

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

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

(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.

 207/2009
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.29(a)

#### **SECTION 2** **P RIORITY**

_Article 34_

**Right of priority**

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

# EN 35 EN

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

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

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

5. If the first filing has been made in a State which is not a party to the Paris Convention or to
the Agreement establishing the World Trade Organisation, paragraphs 1 to 4 shall apply only
in so far as that State, according to published findings, grants, on the basis of the first filing
made at the Office and subject to conditions equivalent to those laid down in this Regulation,
a right of priority having equivalent effect.  2 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 the first sentence is accorded, it shall publish a
communication to that effect in the _Official Journal of the European Union_ . 

 2424/2015 Art. 1.29(b)

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.

 2424/2015 Art. 1.30

_Article 35_

**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

# EN 36 EN

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

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

 207/2009 (adapted)
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.5
 3 2424/2015 Art. 1.31(a)

_Article 36_

**Effect of priority right**

The right of priority shall have the effect that the date of priority shall count as the date of
filing of the  1 EU trade mark  application for the purposes of establishing which rights
take precedence.

_Article 37_

**Equivalence of**  **2** **Union**  **filing with national filing**

An  1 EU trade mark  application which has been accorded a date of filing shall, in the
Member States, be equivalent to a regular national filing, where appropriate with the priority
claimed for the  1 EU trade mark  application.

#### **SECTION 3** **E XHIBITION PRIORITY**

_Article 38_

**Exhibition priority**

1. If an applicant for an  1 EU trade mark  has displayed goods or services under the mark
applied for, at an official or officially recognised international exhibition falling within the
terms of the Convention  relating to  international exhibitions signed at Paris
on 22 November 1928 and last revised on 30 November 1972, he may, if he files the
application within a period of six months from the date of the first display of the goods or
services under the mark applied for, claim a right of priority from that date within the
meaning of Article 36.  3 The priority claim shall be filed together with the EU trade mark
application. 

# EN 37 EN

 2424/2015 Art. 1.31(b)

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.

 207/2009

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

 2424/2015 Art. 1.31(c)

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 207(2).

 207/2009 (adapted)
 1 2424/2015 Art. 1.2

#### **SECTION 4** **S ENIORITY OF A NATIONAL TRADE MARK**

_Article 39_

**Claiming seniority of a national trade mark**  **in an application for an EU trade mark**
**or subsequent to the filing of the application** 

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

 2424/2015 Art. 1.32(a)

2. Seniority claims shall either be filed together with the EU trade mark application or within
two months of the filing date of the application, and shall include the Member State or
Member States in or for which the mark is 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

# EN 38 EN

application, the documentation in support of the seniority claim shall be submitted to the
Office within three months of receipt of the seniority claim.

 207/2009
 1 2424/2015 Art. 1.2

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

 2424/2015 Art. 1.32(b)

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

 2424/2015 Art. 1.32(c)

5. 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.

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

7. The Executive Director may determine that the documentation to be 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 6, provided that the information required
is available to the Office from other sources.

 207/2009 (adapted)
 1 2424/2015 Art. 1.2

_Article 40_

**Claiming seniority**  **of a national trade mark**  **after registration of**
 **an**   **1** **EU trade mark** 

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

# EN 39 EN

 2424/2015 Art. 1.33(a)

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

 2424/2015 Art. 1.33(b)

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

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

 207/2009
 1 2424/2015 Art. 1.2

### **CHAPTER IV** **REGISTRATION PROCEDURE**

#### **SECTION 1** **E XAMINATION OF APPLICATIONS**

_Article 41_

**Examination of the conditions of filing**

1. The Office shall examine whether:

(a) the  1 EU trade mark  application satisfies the requirements for the accordance of
a date of filing in accordance with Article 32;

 2424/2015 Art. 1.34(a)

(b) the EU trade mark application complies with the conditions and requirements
referred to in Article 31(3);

# EN 40 EN

 207/2009
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.34(b)
 3 2424/2015 Art. 1.34(c)

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

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

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

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

5. If the default on payment established pursuant to paragraph 1(c) is not remedied within the
prescribed period, the application shall be deemed to be withdrawn unless it is clear which
categories of goods or services the amount paid is intended to cover.  3 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. 

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

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

 2424/2015 Art. 1.34(d)

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.

# EN 41 EN

 207/2009
 1 2424/2015 Art. 1.2

_Article 42_

**Examination as to absolute grounds for refusal**

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

 2424/2015 Art. 1.35(b)

2. The application shall not be refused before the applicant has been allowed the opportunity
to withdraw or amend the application or to submit his 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.

 207/2009

#### **SECTION 2** **S EARCH**

 2424/2015 Art. 1.36 (adapted)

_Article 43_

**Search report**

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

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.

# EN 42 EN

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

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

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

6. The Office shall transmit 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.

 207/2009

#### **SECTION 3** **P UBLICATION OF THE APPLICATION**

_Article 44_

**Publication of the application**

 2424/2015 Art. 1.37(a)

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

 207/2009

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

# EN 43 EN

 2424/2015 Art. 1.37(b)
(adapted)

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

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

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

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

 207/2009

#### **SECTION 4** **O BSERVATIONS BY THIRD PARTIES AND OPPOSITION**

 2424/2015 Art. 1.38

_Article 45_

**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.

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.

# EN 44 EN

 207/2009
 1 2424/2015 Art. 1.2

_Article 46_

**Opposition**

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

(a) by the proprietors of earlier trade marks referred to in Article 8(2) as well as
licensees authorised by the proprietors of those trade marks, in respect of Article 8(1)
and (6);

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

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

 2424/2015 Art. 1.39(a)

(d) by the persons authorised under the relevant Union legislation or national law to
exercise the rights referred to in Article 8(5).

 207/2009

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

 2424/2015 Art. 1.39(b)

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.

 2424/2015 Art. 1.39(c)

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

# EN 45 EN

 207/2009 (adapted)

_Article 47_

**Examination of opposition**

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

 2424/2015 Art. 1.40 (adapted)

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  that  the earlier EU trade mark has at that date been
registered for not less than five years. In the absence of proof to this effect, the opposition
shall be rejected. If the earlier EU trade mark has been used in 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.

 207/2009
 1 2424/2015 Art. 1.5
 2 2424/2015 Art. 1.2

3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by
substituting use in the Member State in which the earlier national trade mark is protected for
use in the  1 Union  .

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

5. If examination of the opposition reveals that the trade mark may not be registered in respect
of some or all of the goods or services for which the  2 EU trade mark  application has
been made, the application shall be refused in respect of those goods or services. Otherwise
the opposition shall be rejected.

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

# EN 46 EN

 2424/2015 Art. 1.41 (adapted)

_Article 48_

**Delegation of powers**

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

 207/2009
 1 2424/2015 Art. 1.2

#### **SECTION 5** **W ITHDRAWAL, RESTRICTION, AMENDMENT AND DIVISION OF**

**THE** **APPLICATION**

_Article 49_

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

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

2. In other respects, an  1 EU trade mark  application may be amended, upon request of
the applicant, only by correcting the name and address of the applicant, errors of wording or
of copying, or obvious mistakes, provided that such correction does not substantially change
the trade mark or extend the list of goods or services. Where the amendments affect the
representation of the trade mark or the list of goods or services and are made after publication
of the application, the trade mark application shall be published as amended.

 2424/2015 Art. 1.42 (adapted)

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

# EN 47 EN

 207/2009

_Article 50_

**Division of the application**

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

2. The declaration of division shall not be admissible:

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

 2424/2015 Art. 1.43(a)

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

 207/2009

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

 2424/2015 Art. 1.43(c)

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

 207/2009

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

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

# EN 48 EN

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

 2424/2015 Art. 1.43(d)

8. Where the declaration of division relates to an application which has already been
published pursuant to Article 44, 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 a 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 207(2).

 207/2009

#### **SECTION 6** **R EGISTRATION**

 2424/2015 Art. 1.44

_Article 51_

**Registration**

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

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

# EN 49 EN

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

 207/2009
 1 2424/2015 Art. 1.2

### **CHAPTER V** **DURATION, RENEWAL, ALTERATION AND DIVISION OF**  1 EU TRADE MARKS 

_Article 52_

**Duration of registration**

 1 EU trade marks  shall be registered for a period of 10 years from the date of filing of
the application. Registration may be renewed in accordance with Article 53 for further periods
of 10 years.

 2424/2015 Art. 1.45

_Article 53_

**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, where 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.

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;

# EN 50 EN

(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.

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

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

8. Where a request for renewal is not submitted or is submitted after the expiry of the period
provided for in paragraph 3, or where the fees are not paid or are paid only after the period in
question has expired, or where the 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 date on which the existing registration expired. Where the renewal fees
have been paid but the registration is not renewed, those fees shall be refunded.

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

 207/2009
 1 2424/2015 Art. 1.2

_Article 54_

**Alteration**

1. The  1 EU trade mark  shall not be altered in the Register during the period of
registration or on renewal thereof.

# EN 51 EN

2. Nevertheless, where the  1 EU trade mark  includes the name and address of the
proprietor, any alteration thereof not substantially affecting the identity of the trade mark as
originally registered may be registered at the request of the proprietor.

 2424/2015 Art. 1.46(a)

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 207(2).

 2424/2015 Art. 1.46(b)

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.

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 the period of three months following publication.
Articles 46 and 47 and rules adopted pursuant to Article 48 shall apply to the publication of
the registration of the alteration.

 2424/2015 Art. 1.47

_Article 55_

**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 54(2) and which is not the consequence of
a whole or partial transfer of the EU trade mark shall, at the request of the proprietor, be
recorded in the Register.

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

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

# EN 52 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, 2 and 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.

 207/2009
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.3

_Article 56_

**Division of the registration**

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

2. The declaration of division shall not be admissible:

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

(b) if, where a counterclaim for revocation or for a declaration of invalidity has been
entered in a case before an  2 EU trade mark court , such a divisional declaration
has the effect of introducing a division amongst the goods or services against which
the counterclaim is directed, until the mention of the  2 EU trade mark court  's
judgment is recorded in the Register pursuant to Article 128(6).

 2424/2015 Art. 1.48(a)
(adapted)

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 period expires, the
Office shall refuse the declaration of division.

# EN 53 EN

 207/2009

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

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

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

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

 2424/2015 Art. 1.48(b)

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 207(2).

# EN 54 EN

 207/2009
 1 2424/2015 Art. 1.2

### **CHAPTER VI** **SURRENDER, REVOCATION AND INVALIDITY**

#### **SECTION 1** **S URRENDER**

_Article 57_

**Surrender**

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

 2424/2015 Art. 1.49(a)

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 63(1) shall be conditional
upon the final rejection or withdrawal of the application for revocation.

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

 2424/2015 Art. 1.49(b)

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 207(2).

# EN 55 EN

 207/2009
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.5

#### **SECTION 2** **G ROUNDS FOR REVOCATION**

_Article 58_

**Grounds for revocation**

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

(a) if, within a continuous period of five years, the trade mark has not been put to
genuine use in the  2 Union  in connection with the goods or services in respect
of which it is registered, and there are no proper reasons for non-use; however, no
person may claim that the proprietor's rights in an  1 EU trade mark  should be
revoked where, during the interval between expiry of the five-year period and filing
of the application or counterclaim, genuine use of the trade mark has been started or
resumed; the commencement or resumption of use within a period of three months
preceding the filing of the application or counterclaim which began at the earliest on
expiry of the continuous period of five years of non-use shall, however, be
disregarded where preparations for the commencement or resumption occur only
after the proprietor becomes aware that the application or counterclaim may be filed;

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

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

2. Where the grounds for revocation of rights exist in respect of only some of the goods or
services for which the  1 EU trade mark  is registered, the rights of the proprietor shall be
declared to be revoked in respect of those goods or services only.

# EN 56 EN

#### **SECTION 3** **G ROUNDS FOR INVALIDITY**

_Article 59_

**Absolute grounds for invalidity**

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

(a) where the  1 EU trade mark  has been registered contrary to the provisions of
Article 7;

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

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

3. Where the ground for invalidity exists in respect of only some of the goods or services for
which the  1 EU trade mark  is registered, the trade mark shall be declared invalid as
regards those goods or services only.

_Article 60_

**Relative grounds for invalidity**

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

(a) where there is an earlier trade mark as referred to in Article 8(2) and the conditions
set out in paragraph 1 or paragraph 6 of that Article are fulfilled;

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

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

 2424/2015 Art. 1.50(a)

(d) where there is an earlier designation of origin or geographical indication as referred
to in Article 8(5) and the conditions set out in that paragraph are fulfilled.

# EN 57 EN

 2424/2015 Art. 1.50(b)

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.

 207/2009
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.5

2. An  1 EU trade mark  shall also be declared invalid on application to the Office or on
the basis of a counterclaim in infringement proceedings where the use of such trade mark may
be prohibited pursuant to another earlier right under the  2 Union  legislation or national
law governing its protection, and in particular:

(a) a right to a name;

(b) a right of personal portrayal;

(c) a copyright;

(d) an industrial property right.

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

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

5. Article 59(3) shall apply.

_Article 61_

**Limitation in consequence of acquiescence**

 2424/2015 Art. 1.51

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.

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

# EN 58 EN

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.

 207/2009
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.52(a)

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

#### **SECTION 4** **C ONSEQUENCES OF REVOCATION AND INVALIDITY**

_Article 62_

**Consequences of revocation and invalidity**

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

2. The  1 EU trade mark  shall be deemed not to have had, as from the outset, the effects
specified in this Regulation, to the extent that the trade mark has been declared invalid.

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

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

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

# EN 59 EN

#### **SECTION 5** **P ROCEEDINGS IN THE O FFICE IN RELATION TO REVOCATION OR INVALIDITY**

_Article 63_

**Application for revocation or for a declaration of invalidity**

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

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

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

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

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

 2424/2015 Art. 1.52(b)

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 123, and the decision of the Office or that court on that application
has acquired the authority of a final decision.

 207/2009

_Article 64_

**Examination of the application**

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

# EN 60 EN

 2424/2015 Art. 1.53 (adapted)

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
 that  the earlier EU trade mark has at that date been registered for not less than five
years. If, at the date on which the EU trade mark application was filed or at the priority date of
the EU trade mark application, the earlier EU trade mark had been registered for not less than
five years, the proprietor of the earlier EU trade mark shall furnish proof that, in addition, the
conditions set out in Article 47(2) were satisfied at that date. In the absence of proof to this
effect, the application for a declaration of invalidity shall be rejected. If the earlier EU trade
mark has been used only in relation to part of the goods or services for which it is registered,
it shall, for the purpose of the examination of the application for a declaration of invalidity, be
deemed to be registered in respect of that part of the goods or services only.

 207/2009
 1 2424/2015 Art. 1.5
 2 2424/2015 Art. 1.2

3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by
substituting use in the Member State in which the earlier national trade mark is protected for
use in the  1 Union  .

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

5. If the examination of the application for revocation of rights or for a declaration of
invalidity reveals that the trade mark should not have been registered in respect of some or all
of the goods or services for which it is registered, the rights of the proprietor of
the  2 EU trade mark  shall be revoked or it shall be declared invalid in respect of those
goods or services. Otherwise the application for revocation of rights or for a declaration of
invalidity shall be rejected.

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

 2424/2015 Art. 1.54 (adapted)

_Article 65_

**Delegation of powers**

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

# EN 61 EN

 207/2009

### **CHAPTER VII** **APPEALS**

_Article 66_

**Decisions subject to appeal**

 2424/2015 Art. 1.55

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

 207/2009

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

_Article 67_

**Persons entitled to appeal and to be parties to appeal proceedings**

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

 2424/2015 Art. 1.56

_Article 68_

**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.

# EN 62 EN

 207/2009

_Article 69_

**Revision of decisions in** _**ex parte**_ **cases**

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

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

_Article 70_

**Examination of appeals**

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

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

_Article 71_

**Decisions in respect of appeals**

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

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

 2424/2015 Art. 1.58

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

# EN 63 EN

 207/2009

_Article 72_

**Actions before the Court of Justice**

 2424/2015 Art. 1.59(a)

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

 207/2009 (adapted)

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

 2424/2015 Art. 1.59(b)

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

 207/2009

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

 2424/2015 Art. 1.59(c)

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.

 2424/2015 Art. 1.60 (adapted)

_Article 73_

**Delegation of powers**

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

(a) the formal content of the notice of appeal referred to in Article 68 and the procedure
for the filing and the examination of an appeal;

# EN 64 EN

(b) the formal content and form of the Board of Appeal's decisions as referred to in
Article 71;

(c) the reimbursement of the appeal fee as referred to in Article 68.

 207/2009

### **CHAPTER VIII**

 2424/2015 Art. 1.61

### **SPECIFIC PROVISIONS ON EUROPEAN UNION** **COLLECTIVE MARKS AND CERTIFICATION MARKS**

 2424/2015 Art. 1.62

#### **SECTION 1** **EU COLLECTIVE MARKS**

 207/2009

_Article 74_

 2424/2015 Art. 1.4

**EU collective marks**

 207/2009 (adapted)
 1 2424/2015 Art. 1.4
 2 2424/2015 Art. 1.2

1. A  1 European Union collective mark (‘EU collective mark’)  shall be an  2 EU trade
mark  which is described as such when the mark is applied for and is capable of
distinguishing the goods or services of the members of the association which is the proprietor
of the mark from those of other undertakings. Associations of manufacturers, producers,
suppliers of services, or traders which, under the terms of the law governing them, have the
capacity in their own name to have rights and obligations of all kinds, to make contracts or
accomplish other legal acts and to sue and be sued, as well as legal persons governed by
public law, may apply for  1 EU collective marks  .

2. In derogation from Article 7(1)(c), signs or indications which may serve, in trade, to
designate the geographical origin of the goods or services may constitute  1 EU collective
marks  within the meaning of paragraph 1.  An EU  collective mark shall not entitle

# EN 65 EN

the proprietor to prohibit a third party from using in the course of trade such signs or
indications, provided  that  he uses them in accordance with honest practices in
industrial or commercial matters; in particular, such a mark may not be invoked against a
third party who is entitled to use a geographical name.

 2424/2015 Art. 1.63

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

 207/2009

_Article 75_

**Regulations governing use of the mark**

 2424/2015 Art. 1.64(a)

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

 207/2009

2. The regulations governing use shall specify the persons authorised to use the mark, the
conditions of membership of the association and, where they exist, the conditions of use of
the mark, including sanctions. The regulations governing use of a mark referred to in
Article 74(2) must authorise any person whose goods or services originate in the geographical
area concerned to become a member of the association which is the proprietor of the mark.

 2424/2015 Art. 1.64(b)

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 207(2).

 207/2009
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.4

_Article 76_

**Refusal of the application**

1. In addition to the grounds for refusal of an  1 EU trade mark  application provided for
in Articles 41 and 42, an application for an  2 EU collective mark  shall be refused where
the provisions of Articles 74 or 75 are not satisfied, or where the regulations governing use
are contrary to public policy or to accepted principles of morality.

# EN 66 EN

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

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

 2424/2015 Art. 1.65

_Article 77_

**Observations by third parties**

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

 207/2009
 1 2424/2015 Art. 1.4
 2 2424/2015 Art. 1.2

_Article 78_

**Use of marks**

Use of an  1 EU collective mark  by any person who has authority to use it shall satisfy
the requirements of this Regulation, provided that the other conditions which this Regulation
imposes with regard to the use of  2 EU trade marks  are fulfilled.

_Article 79_

**Amendment of the regulations governing use of the mark**

1. The proprietor of an  1 EU collective mark  must submit to the Office any amended
regulations governing use.

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

 2424/2015 Art. 1.66

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

# EN 67 EN

 207/2009
 1 2424/2015 Art. 1.4

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

_Article 80_

**Persons who are entitled to bring an action for infringement**

1. The provisions of Article 25(3) and (4) concerning the rights of licensees shall apply to
every person who has authority to use an  1 EU collective mark  .

2. The proprietor of an  1 EU collective mark  shall be entitled to claim compensation on
behalf of persons who have authority to use the mark where they have sustained damage in
consequence of unauthorised use of the mark.

_Article 81_

**Grounds for revocation**

Apart from the grounds for revocation provided for in Article 58, the rights of the proprietor
of an  1 EU collective mark  shall be revoked on application to the Office or on the basis
of a counterclaim in infringement proceedings, if:

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

(b) the manner in which the mark has been used by the proprietor has caused it to
become liable to mislead the public in the manner referred to in Article 76(2);

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

_Article 82_

**Grounds for invalidity**

Apart from the grounds for invalidity provided for in Articles 59 and 60, an  1 EU collective
mark  which is registered in breach of the provisions of Article 76 shall be declared invalid
on application to the Office or on the basis of a counterclaim in infringement proceedings,
unless the proprietor of the mark, by amending the regulations governing use, complies with
the requirements of those provisions.

# EN 68 EN

 2424/2015 Art. 1.67

#### **SECTION 2** **EU CERTIFICATION MARKS**

_Article 83_

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

_Article 84_

**Regulations governing use of 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 207(2).

_Article 85_

**Refusal of the application**

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

# EN 69 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 86_

**Observations by third parties**

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

_Article 87_

**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 84 shall satisfy the requirements of this
Regulation, provided that the other conditions laid down in this Regulation with regard to the
use of EU trade marks are fulfilled.

_Article 88_

**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 84 or involve one of the grounds for refusal referred to
in Article 85.

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

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

_Article 89_

**Transfer**

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

# EN 70 EN

_Article 90_

**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 91_

**Grounds for revocation**

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

(a) the proprietor no longer complies with the requirements set out in Article 83(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;

(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 85(2);

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

_Article 92_

**Grounds for invalidity**

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

# EN 71 EN

_Article 93_

**Conversion**

Without prejudice to Article 139(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 (EU) 2015/2436.

 207/2009

### **CHAPTER IX** **PROCEDURE**

#### **SECTION 1** **G ENERAL PROVISIONS**

 2424/2015 Art. 1.68

_Article 94_

**Decisions and communications of the Office**

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

2. Any decision, communication or notice from the Office shall indicate the department or
division of the Office as well as the name or the names of the official or officials responsible.
They shall be signed by that official or those officials, or, instead of a signature, carry a
printed or stamped seal of the Office. The Executive Director may determine that other means
of identifying the department or division of the Office and the name of the official or officials
responsible, or an identification other than a seal, may be used where 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 66, 67 and
68. The parties may not plead any failure on the part of the Office to communicate the
availability of appeal proceedings.

# EN 72 EN

 207/2009 (adapted)
 1 2424/2015 Art. 1.69

_Article 95_

**Examination of the facts by the Office of its own motion**

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

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

_Article 96_

**Oral proceedings**

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

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

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

 2424/2015 Art. 1.70 (adapted)

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

 207/2009
 1 2424/2015 Art. 1.71(a)

_Article 97_

**Taking of evidence**

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

(a) hearing the parties;

# EN 73 EN

(b) requests for information;

(c) the production of documents and items of evidence;

(d) hearing witnesses;

(e) opinions by experts;

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

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

3. If the Office considers it necessary for a party, witness or expert to give evidence orally, it
shall issue a summons to the person concerned to appear before it.  1 The period of notice
provided in such summons shall be at least one month, unless they agree to a shorter
period. 

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

 2424/2015 Art. 1.71(b)
(adapted)

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  is  empowered to adopt delegated acts in accordance with
Article 208 specifying the detailed arrangements for the taking of evidence.

 2424/2015 Art. 1.72 (adapted)

_Article 98_

**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 proof of
delivery.

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

# EN 74 EN

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  is  empowered to adopt delegated acts in accordance with
Article 208 specifying the detailed arrangements for notification.

 2424/2015 Art. 1.73 (adapted)

_Article 99_

**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 98. The latter may apply for a decision on
the matter within two months of notification of the communication, if he considers that the
finding of the Office is incorrect. The Office shall adopt such a decision only where it
disagrees with the person requesting it; otherwise the Office shall amend its finding and
inform the person requesting the decision.

_Article 100_

**Communications to the Office**

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

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

_Article 101_

**Time limits**

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

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

# EN 75 EN

located or, in the case of an actual interruption of the Office's connection to admitted
electronic means of communication.

4. If an exceptional occurrence, such as a natural disaster or strike, interrupts or interferes
with proper communication from the parties to the proceedings to 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  is  empowered to adopt delegated acts in accordance with
Article 208 specifying the details regarding the calculation and duration of time limits.

_Article 102_

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

2. Where the correction of errors in the registration of a trade mark or the publication of the
registration is requested by the proprietor, Article 55 shall apply _mutatis mutandis_ .

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

 2424/2015 Art. 1.74 (adapted)

_Article 103_

**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.

# EN 76 EN

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

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

 207/2009 (adapted)
 1 2424/2015 Art. 1.2

_Article 104_

_**Restitutio in integrum**_

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

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

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

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

5. This Article shall not be applicable to the time limits referred to in paragraph 2 of
this Article, Article 46(1) and (3) and Article 105.

6. Where the applicant for or proprietor of an  1 EU trade mark  has his rights reestablished, he may not invoke his rights vis-à-vis a third party who, in good faith, has put
goods on the market or supplied services under a sign which is identical with, or similar to,
the  1 EU trade mark  in the course of the period between the loss of rights in the
application or in the  1 EU trade mark  and publication of the mention of re-establishment
of those rights.

7. A third party who may avail himself of the provisions of paragraph 6 may bring third party
proceedings against the decision re-establishing the rights of the applicant for or proprietor of

# EN 77 EN

an  1 EU trade mark  within a period of two months as from the date of publication of the
mention of re-establishment of those rights.

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

_Article 105_

**Continuation of proceedings**

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

 2424/2015 Art. 1.75(a)

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

 207/2009

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

 2424/2015 Art. 1.75(b)

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.

 207/2009

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

# EN 78 EN

 2424/2015 Art. 1.76 (adapted)

_Article 106_

**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 120, proceedings shall be interrupted only on
application by such representative;

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

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

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  is  empowered to adopt delegated acts in accordance with
Article 208 specifying the detailed arrangements for the resumption of proceedings before the
Office.

 2424/2015 Art. 1.77

_Article 107_

**Reference to general principles**

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

 207/2009

_Article 108_

**Termination of financial obligations**

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

# EN 79 EN

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

arose.

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

#### **SECTION 2** **C OSTS**

_Article 109_

**Costs**

 2424/2015 Art. 1.78(a)

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

 2424/2015 Art. 1.78(b)

2. 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 207(2).

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 120(1) are concerned, the need to ensure that the obligation to
bear the costs may not be misused for tactical reasons by the other party. Subsistence
expenses shall be calculated in accordance with the Staff Regulations of Officials of the

# EN 80 EN

Union and the Conditions of Employment of Other Servants of the Union, laid down in
Council Regulation (EEC, Euratom, ECSC) No 259/68 [18] .

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

 207/2009 (adapted)
 1 2424/2015 Art. 1.2

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

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

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

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

 2424/2015 Art. 1.78(c)

7. The Opposition Division or Cancellation Division or Board of Appeal shall fix the amount
of the costs to be paid pursuant to paragraphs 1 to 6 of this Article when the costs to be paid
are limited to the fees paid to the Office and the representation costs. In all other cases, the
registry of the Board of Appeal or a member of the staff of the Opposition Division or
Cancellation Division shall fix, on request, the amount of the costs to be reimbursed. The
request shall be admissible only for the period of two months following the date on which the
decision for which an application was made for the costs to be fixed becomes final and shall
be accompanied by a bill and supporting evidence. For the costs of representation pursuant to
Article 120(1), an assurance by the representative that the costs have been incurred shall be
sufficient. For other costs, it shall be sufficient if their plausibility is established. Where the
amount of the costs is fixed pursuant to the first sentence of this paragraph, representation
costs shall be awarded at the level laid down in the act adopted pursuant to paragraph 2 of this
Article and irrespective of whether they have been actually incurred.

 2424/2015 Art. 1.78(d)

8. 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

18 OJ L 56, 4.3.1968, p. 1.

# EN 81 EN

case may be, shall take a decision on the request for a review of the decision on the fixing of
costs without oral proceedings.

 207/2009
 1 2424/2015 Art. 1.79

_Article 110_

**Enforcement of decisions fixing the amount of costs**

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

2. Enforcement shall be governed by the rules of civil procedure in force in the State in the
territory of which it is carried out.  1 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. 

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

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

#### **SECTION 3** **I NFORMATION WHICH MAY BE MADE AVAILABLE TO THE PUBLIC AND OF THE** **AUTHORITIES OF THE M EMBER S TATES**

 2424/2015 Art. 1.80

_Article 111_

**Register of EU trade marks**

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

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;

# EN 82 EN

(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 119(3);

(f) the representation of the mark, with indications as to its nature; and, where
applicable, a description of the mark;

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

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

(i) particulars of claims of exhibition priority pursuant to Article 38;

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

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

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

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

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

(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 204 of this Regulation,
together with the date of the international registration pursuant to Article 3(4) of the
Madrid Protocol or the date on which the territorial extension to the Union made
subsequent to the international registration pursuant to Article 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 119(3);

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

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

# EN 83 EN

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

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

(g) total or partial transfers pursuant to Article 20;

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

(i) levy of execution pursuant to Article 23 and insolvency proceedings pursuant to
Article 24;

(j) the grant or transfer of a licence pursuant to Article 25 and, where applicable, the
type of licence;

(k) renewal of a registration pursuant to Article 53, the date from which it takes effect
and any restrictions pursuant to Article 53(4);

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

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

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

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

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

(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) the modification to or cancellation from the Register of the items referred to in
points (h), (i) and (j) of this paragraph;

(t) the replacement of the EU trade mark by an international registration pursuant to
Article 197;

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

(v) the date and number of international registrations based on the EU trade mark
pursuant to Article 185(2);

# EN 84 EN

(w) the division of an application pursuant to Article 50 and the division of a registration
pursuant to Article 56, together with the items referred to in 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 103, where
the revocation concerns a decision or entry which has been published;

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

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 149(4).

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 an 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.

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.

 2424/2015 Art. 1.81

_Article 112_

**Database**

1. In addition to the obligation to keep a Register within the meaning of Article 111, the
Office shall collect and store in an electronic database all the particulars provided by

# EN 85 EN

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 111, 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;

(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 111, may be made available in machinereadable 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.

_Article 113_

**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.

# EN 86 EN

 207/2009
 1 2424/2015 Art. 1.2

_Article 114_

**Inspection of files**

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

2. Any person who can prove that the applicant for an  1 EU trade mark  has stated that
after the trade mark has been registered he will invoke the rights under it against him may
obtain inspection of the files prior to the publication of that application and without the
consent of the applicant.

3. Subsequent to the publication of the  1 EU trade mark  application, the files relating to
such application and the resulting trade mark may be inspected on request.

 2424/2015 Art. 1.82(a)

4. Where the files are inspected pursuant to paragraph 2 or 3 of this Article, documents
relating to exclusion or objection pursuant to Article 169, draft 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.

 2424/2015 Art. 1.82(b)

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 190(1), in
accordance with the conditions laid down in paragraphs 1, 3 and 4 of this Article.

9. Subject to the restrictions provided for in paragraph 4, the Office may, on request,
communicate information from any file of an EU trade mark applied for or of a registered
EU trade mark, subject to payment of a fee. However, the Office may require the exercise of

# EN 87 EN

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.

 2424/2015 Art. 1.83

_Article 115_

**Keeping of files**

1. The Office shall keep the files of any procedure relating to an EU trade mark application or
EU trade mark registration. The Executive Director shall determine the form in which those
files shall be kept.

2. Where the files are kept in electronic format, the electronic files, or back-up copies thereof,
shall be kept indefinitely. The original documents filed by parties to the proceedings, and
forming the basis of such electronic files, shall be disposed of after a period following their
reception by the Office, which shall be determined by the Executive Director.

3. Where and to the extent that files or parts of the files are kept in any form other than
electronically, documents or items of evidence constituting part of such files shall be kept for
at least five years from the end of the year in which the application is rejected or withdrawn or
is deemed to be withdrawn, the registration of the EU trade mark expires completely pursuant
to Article 53, the complete surrender of the EU trade mark is registered pursuant to Article 57,
or the EU trade mark is completely removed from the Register pursuant to Article 64(6)
or 128(6).

 2424/2015 Art. 1.84

_Article 116_

**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.

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

# EN 88 EN

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 207(2).

 207/2009
 1 2424/2015 Art. 1.85(a)

_Article 117_

**Administrative cooperation**

 1 1.  Unless otherwise provided in this Regulation or in national laws, the Office and the
courts or authorities of the Member States shall on request give assistance to each other by
communicating information or opening files for inspection. Where the Office lays files open
to inspection by courts, Public Prosecutors' Offices or central industrial property offices, the
inspection shall not be subject to the restrictions laid down in Article 114.

 2424/2015 Art. 1.85(b)

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 114, when it is opened to third parties. Those implementing acts shall be adopted in
accordance with the examination procedure referred to in Article 207(2).

# EN 89 EN

 207/2009

_Article 118_

**Exchange of publications**

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

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

#### **SECTION 4** **R EPRESENTATION**

_Article 119_

**General principles of representation**

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

 2424/2015 Art. 1.86

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 120(1) in all proceedings provided
for by this Regulation, other than the filing of an application for an EU trade mark.

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

# EN 90 EN

 207/2009

_Article 120_

**Professional representatives**

 2424/2015 Art. 1.87(a)

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 Member State, to act as a representative in
trade mark matters;

(b) professional representatives whose names appear on the list maintained for this
purpose by the Office.

Representatives acting before the Office shall, at the request of the Office or, where
appropriate, of the other party to the proceedings, file with it a signed authorisation for
insertion on the files.

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

(a) being a national of one of the Member States of the European Economic Area;

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

(c) being entitled to represent natural or legal persons in trade mark matters before the
Benelux Office for Intellectual Property or before the central 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.

 207/2009

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

# EN 91 EN

 2424/2015 Art. 1.87(b)

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.

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.

 2424/2015 Art. 1.88 (adapted)

_Article 121_

**Delegation of powers**

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

(a) the conditions and the procedure for the appointment of a common representative as
referred to in Article 119(4);

(b) the conditions under which employees referred to in Article 119(3) and professional
representatives referred to in Article 120(1) shall file with the Office a signed
authorisation in order to undertake representation, and the content of that
authorisation;

(c) the circumstances in which a person may be removed from the list of professional
representatives referred to in Article 120(5).

# EN 92 EN

 207/2009
 1 2424/2015 Art. 1.2

### **CHAPTER X** **JURISDICTION AND PROCEDURE IN LEGAL ACTIONS** RELATING TO  1 EU TRADE MARKS 

#### **SECTION 1**

 2424/2015 Art. 1.89

#### **A PPLICATION OF U NION RULES ON JURISDICTION AND THE RECOGNITION AND**

**ENFORCEMENT OF JUDGMENTS IN CIVIL AND COMMERCIAL MATTERS**

 207/2009

_Article 122_

 2424/2015 Art. 1.90(a)

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

 207/2009
 1 2424/2015 Art. 1.90(b)
 2 2424/2015 Art. 1.2

1. Unless otherwise specified in this Regulation,  1 the Union rules on jurisdiction and the
recognition and enforcement of judgments in civil and commercial matters  shall apply to
proceedings relating to  2 EU trade marks  and applications for  2 EU trade marks , as
well as to proceedings relating to simultaneous and successive actions on the basis of
 2 EU trade marks  and national trade marks.

2. In the case of proceedings in respect of the actions and claims referred to in Article 124:

(a) Articles 4 and 6, points 1, 2, 3 and 5 of Article 7 and Article 35 of Regulation (EU)
No 1215/2012 shall not apply;

(b) Articles 25 and 26 of Regulation (EU) No 1215/2012 shall apply subject to the
limitations in Article 125(4) of this Regulation;

# EN 93 EN

(c) the provisions of Chapter II of Regulation (EU) No 1215/2012 which are applicable
to persons domiciled in a Member State shall also be applicable to persons who do
not have a domicile in any Member State but have an establishment therein.

 2424/2015 Art. 1.90(c)

3. References in this Regulation to Regulation (EU) No 1215/2012 shall include, where
appropriate, the Agreement between the European Community and the Kingdom of Denmark
on jurisdiction and the recognition and enforcement of judgments in civil and commercial
matters done on 19 October 2005.

 207/2009
 1 2424/2015 Art. 1.2

#### **SECTION 2** **D ISPUTES CONCERNING THE INFRINGEMENT AND VALIDITY OF**  1 EU TRADE MARKS 

_Article 123_

 2424/2015 Art. 1.3

**EU trade mark courts**

 207/2009 (adapted)
 1 2424/2015 Art. 1.3
 2 2424/2015 Art. 1.2
 3 2424/2015 Art. 1.91

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

2. Any change made in the number, names or territorial jurisdiction of the courts  included
in the list of EU trade mark courts communicated by a Member State to the Commission in
accordance with Article 95(2) of Regulation (EC) No 207/2009  shall be notified without
delay by the Member State concerned to the Commission.

3. The information referred to in paragraph 2 shall be notified by the Commission to the
Member States and published in the _Official Journal of the European Union_ .

# EN 94 EN

_Article 124_

**Jurisdiction over infringement and validity**

The  1 EU trade mark courts  shall have exclusive jurisdiction:

(a) for all infringement actions and — if they are permitted under national law —
actions in respect of threatened infringement relating to  2 EU trade marks  ;

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

(c) for all actions brought as a result of acts referred to in  3 Article 11(2)  ;

(d) for counterclaims for revocation or for a declaration of invalidity of the  2 EU trade
mark  pursuant to Article 128.

_Article 125_

**International jurisdiction**

1. Subject to the provisions of this Regulation as well as to any provisions of Regulation (EU)
No 1215/2012 applicable by virtue of Article 122, proceedings in respect of the actions and
claims referred to in Article 124 shall be brought in the courts of the Member State in which
the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he
has an establishment.

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

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

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

(a) Article 25 of Regulation (EU) No 1215/2012 shall apply if the parties agree that a
different  1 EU trade mark court  shall have jurisdiction;

(b) Article 26 of Regulation (EU) No 1215/2012 shall apply if the defendant enters an
appearance before a different  1 EU trade mark court  .

5. Proceedings in respect of the actions and claims referred to in Article 124, with the
exception of actions for a declaration of non-infringement of an  2 EU trade mark , may
also be brought in the courts of the Member State in which the act of infringement has been
committed or threatened, or in which an act within the meaning of Article  11(2)  has
been committed.

# EN 95 EN

_Article 126_

**Extent of jurisdiction**

1. An  1 EU trade mark court  whose jurisdiction is based on Article 125(1) to (4) shall
have jurisdiction in respect of:

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

(b) acts within the meaning of Article  11(2)  committed within the territory of any
of the Member States.

2. An  1 EU trade mark court  whose jurisdiction is based on Article 125(5) shall have
jurisdiction only in respect of acts committed or threatened within the territory of the Member
State in which that court is situated.

_Article 127_

**Presumption of validity — Defence as to the merits**

1. The  1 EU trade mark courts  shall treat the  2 EU trade mark  as valid unless its
validity is put in issue by the defendant with a counterclaim for revocation or for a declaration
of invalidity.

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

 2424/2015 Art. 1.92

3. In the actions referred to in points (a) and (c) of Article 124, 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.

 207/2009
 1 2424/2015 Art. 1.3

_Article 128_

**Counterclaims**

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

2. An  1 EU trade mark court  shall reject a counterclaim for revocation or for a
declaration of invalidity if a decision taken by the Office relating to the same subject matter
and cause of action and involving the same parties has already become final.

# EN 96 EN

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

 2424/2015 Art. 1.93(a)

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 132(1)
until the decision on the application is final or the application is withdrawn.

 207/2009

5. Article 64(2) to (5) shall apply.

 2424/2015 Art. 1.93(b)

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.

 207/2009
 1 2424/2015 Art. 1.3
 2 2424/2015 Art. 1.2

7. The  1 EU trade mark court  hearing a counterclaim for revocation or for a declaration
of invalidity may stay the proceedings on application by the proprietor of the  2 EU trade
mark  and after hearing the other parties and may request the defendant to submit an
application for revocation or for a declaration of invalidity to the Office within a time limit
which it shall determine. If the application is not made within the time limit, the proceedings
shall continue; the counterclaim shall be deemed withdrawn. Article 132(3) shall apply.

_Article 129_

**Applicable law**

1. The  1 EU trade mark courts  shall apply the provisions of this Regulation.

 2424/2015 Art. 1.94

2. On all trade mark matters not covered by this Regulation, the relevant EU trade mark court
shall apply the applicable national law.

# EN 97 EN

 207/2009 (adapted)
 1 2424/2015 Art. 1.3
 2 2424/2015 Art. 1.2

3. Unless otherwise provided  for  in this Regulation, an  1 EU trade mark court 
shall apply the rules of procedure governing the same type of action relating to a national
trade mark in the Member State in which the court is located.

_Article 130_

**Sanctions**

1. Where an  1 EU trade mark court  finds that the defendant has infringed or threatened
to infringe an  2 EU trade mark , it shall, unless there are special reasons for not doing so,
issue an order prohibiting the defendant from proceeding with the acts which infringed or
would infringe the  2 EU trade mark  . It shall also take such measures in accordance with
its national law as are aimed at ensuring that this prohibition is complied with.

 2424/2015 Art. 1.95

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.

 207/2009
 1 2424/2015 Art. 1.3
 2 2424/2015 Art. 1.2

_Article 131_

**Provisional and protective measures**

1. Application may be made to the courts of a Member State, including  1 EU trade mark
courts , for such provisional, including protective, measures in respect of an  2 EU trade
mark  or  2 EU trade mark  application as may be available under the law of that State
in respect of a national trade mark, even if, under this Regulation, an  1 EU trade mark
court  of another Member State has jurisdiction as to the substance of the matter.

2. An  1 EU trade mark court  whose jurisdiction is based on Article 125(1), (2), (3) or (4)
shall have jurisdiction to grant provisional and protective measures which, subject to any
necessary procedure for recognition and enforcement pursuant to Chapter III of
Regulation (EU) No 1215/2012, are applicable in the territory of any Member State. No other
court shall have such jurisdiction.

# EN 98 EN

_Article 132_

**Specific rules on related actions**

1. An  1 EU trade mark court  hearing an action referred to in Article 124 other than an
action for a declaration of non-infringement shall, unless there are special grounds for
continuing the hearing, of its own motion after hearing the parties or at the request of one of
the parties and after hearing the other parties, stay the proceedings where the validity of the
 2 EU trade mark  is already in issue before another  1 EU trade mark court  on
account of a counterclaim or where an application for revocation or for a declaration of
invalidity has already been filed at the Office.

2. The Office, when hearing an application for revocation or for a declaration of invalidity
shall, unless there are special grounds for continuing the hearing, of its own motion after
hearing the parties or at the request of one of the parties and after hearing the other parties,
stay the proceedings where the validity of the  2 EU trade mark  is already in issue on
account of a counterclaim before an  1 EU trade mark court  . However, if one of the
parties to the proceedings before the  1 EU trade mark court  so requests, the court may,
after hearing the other parties to these proceedings, stay the proceedings. The Office shall in
this instance continue the proceedings pending before it.

3. Where the  1 EU trade mark court  stays the proceedings it may order provisional and
protective measures for the duration of the stay.

_Article 133_

**Jurisdiction of**  **1** **EU trade mark courts**  **of second instance — Further appeal**

1. An appeal to the  1 EU trade mark courts  of second instance shall lie from judgments
of the  1 EU trade mark courts  of first instance in respect of proceedings arising from the
actions and claims referred to in Article 124.

2. The conditions under which an appeal may be lodged with an  1 EU trade mark court 
of second instance shall be determined by the national law of the Member State in which that
court is located.

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

# EN 99 EN

#### **SECTION 3** O THER DISPUTES CONCERNING  2 EU TRADE MARKS 

_Article 134_

**Supplementary provisions on the jurisdiction of national courts other than**

 **1** **EU trade mark courts** 

1. Within the Member State whose courts have jurisdiction under Article 122(1) those courts
shall have jurisdiction for actions other than those referred to in Article 124, which would
have jurisdiction _ratione loci_ and _ratione materiae_ in the case of actions relating to a national
trade mark registered in that State.

2. Actions relating to an  2 EU trade mark , other than those referred to in Article 124, for
which no court has jurisdiction under Article 122(1) and paragraph 1 of this Article may be
heard before the courts of the Member State in which the Office has its seat.

_Article 135_

**Obligation of the national court**

A national court which is dealing with an action relating to an  2 EU trade mark , other
than the action referred to in Article 124, shall treat the trade mark as valid.

# EN 100 EN

 207/2009
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.5
 3 2424/2015 Art. 1.3

### **CHAPTER XI** **EFFECTS ON THE LAWS OF THE MEMBER STATES**

#### **SECTION 1** **C IVIL ACTIONS ON THE BASIS OF MORE THAN ONE TRADE MARK**

_Article 136_

**Simultaneous and successive civil actions on the basis of**  **1** **EU trade marks** 

**and national trade marks**

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

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

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

2. The court hearing an action for infringement on the basis of an  1 EU trade mark  shall
reject the action if a final judgment on the merits has been given on the same cause of action
and between the same parties on the basis of an identical national trade mark valid for
identical goods or services.

3. The court hearing an action for infringement on the basis of a national trade mark shall
reject the action if a final judgment on the merits has been given on the same cause of action
and between the same parties on the basis of an identical  1 EU trade mark  valid for
identical goods or services.

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

measures.

# EN 101 EN

#### **SECTION 2** **A PPLICATION OF NATIONAL LAWS FOR THE PURPOSE OF PROHIBITING THE USE** OF  1 EU TRADE MARKS 

_Article 137_

**Prohibition of use of**  **1** **EU trade marks** 

1. This Regulation shall, unless otherwise provided for, not affect the right existing under the
laws of the Member States to invoke claims for infringement of earlier rights within the
meaning of Article 8 or Article 60(2) in relation to the use of a later  1 EU trade mark  .
Claims for infringement of earlier rights within the meaning of Article 8(2) and (4) may,
however, no longer be invoked if the proprietor of the earlier right may no longer apply for a
declaration that the  1 EU trade mark  is invalid in accordance with Article 61(2).

2. This Regulation shall, unless otherwise provided for, not affect the right to bring
proceedings under the civil, administrative or criminal law of a Member State or under
provisions of  2 Union  law for the purpose of prohibiting the use of an  1 EU trade
mark  to the extent that the use of a national trade mark may be prohibited under the law of
that Member State or under  2 Union  law.

_Article 138_

**Prior rights applicable to particular localities**

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

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

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

# EN 102 EN

#### **SECTION 3** **C ONVERSION INTO A NATIONAL TRADE MARK APPLICATION**

_Article 139_

**Request for the application of national procedure**

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

(a) to the extent that the  1 EU trade mark  application is refused, withdrawn, or
deemed to be withdrawn;

(b) to the extent that the  1 EU trade mark  ceases to have effect.

2. Conversion shall not take place:

(a) where the rights of the proprietor of the  1 EU trade mark  have been revoked on
the grounds of non-use, unless in the Member State for which conversion is
requested the  1 EU trade mark  has been put to use which would be considered
to be genuine use under the laws of that Member State;

(b) for the purpose of protection in a Member State in which, in accordance with the
decision of the Office or of the national court, grounds for refusal of registration or
grounds for revocation or invalidity apply to the  1 EU trade mark  application or
 1 EU trade mark  .

3. The national trade mark application resulting from the conversion of an  1 EU trade
mark  application or an  1 EU trade mark  shall enjoy in respect of the Member State
concerned the date of filing or the date of priority of that application or trade mark and, where
appropriate, the seniority of a trade mark of that State claimed under Articles 39 or 40.

4. In cases where an  1 EU trade mark  application is deemed to be withdrawn, the Office
shall send to the applicant a communication fixing a period of three months from the date of
that communication in which a request for conversion may be filed.

5. Where the  1 EU trade mark  application is withdrawn or the  1 EU trade mark 
ceases to have effect as a result of a surrender being recorded or of failure to renew the
registration, the request for conversion shall be filed within three months after the date on
which the  1 EU trade mark  application has been withdrawn or on which the
 1 EU trade mark  ceases to have effect.

6. Where the  1 EU trade mark  application is refused by decision of the Office or where
the  1 EU trade mark  ceases to have effect as a result of a decision of the Office or of an
 3 EU trade mark court , the request for conversion shall be filed within three months
after the date on which that decision acquired the authority of a final decision.

# EN 103 EN

7. The effect referred to in Article 37 shall lapse if the request is not filed in due time.

 2424/2015 Art. 1.97
 1 corrigendum OJ L 110,
26.4.2016, p. 4

_Article 140_

**Submission, publication and transmission of the request for conversion**

1. A request for conversion shall be filed with the Office within the relevant period pursuant
to Article 139(4), (5) or (6), and shall include an indication of the grounds for conversion in
accordance with Article 139(1)(a) or (b), the Member States in respect of which conversion is
requested, and the goods and services subject to conversion. Where conversion is requested
following a failure to renew the registration, the period of three months provided for in
Article 139(5) shall begin to run on the day following the last day on which the request for
renewal can be presented pursuant to Article 53(3). The request for 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.

3. The Office shall check whether the conversion requested fulfils the conditions set out in
this Regulation, in particular Article 139(1), (2), (4), (5) and (6), and paragraph 1 of this
Article, together with the formal conditions specified in the implementing act adopted
pursuant to paragraph 6 of this Article. If the conditions governing the request are not
fulfilled, the Office shall notify the applicant of the deficiencies. If the deficiencies are not
remedied within a period to be specified by the Office, the Office shall reject the request for
conversion. Where Article 139(2) applies, the Office shall reject the request for conversion as
inadmissible only with respect to those Member States for which conversion is excluded
under that provision. Where the conversion fee has not been paid within the relevant period of
three months pursuant to Article 139(4), (5) or (6), the Office shall inform the applicant that
the request for conversion is deemed not to have been filed.

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 139(2) for all the Member States in
which that language is one of the official languages. If the Office or an EU trade mark court
has refused the EU trade mark application or has declared the EU trade mark invalid on
absolute grounds which are found to apply throughout the Union or on account of an earlier
EU trade mark or other Union industrial property right, conversion shall be excluded under
Article 139(2) for all Member States.

5. Where the request for conversion complies with the requirements referred to in paragraph 3
of this Article, the Office shall transmit the request for conversion and the data referred to in
 1 Article 111(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.

# EN 104 EN

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 207(2).

 207/2009

_Article 141_

**Formal requirements for conversion**

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

 2424/2015 Art. 1.98 (adapted)

2. An EU trade mark application or  an EU  trade mark transmitted in accordance with
Article 140 shall not be subject to formal requirements of national law which are different
from or additional to those provided for in this Regulation or in acts adopted pursuant to this
Regulation.

 207/2009 (adapted)
 1 2424/2015 Art. 1.99
 2 2424/2015 Art. 1.6
 3 2424/2015 Art. 1.5

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

(a) pay the national application fee;

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

(c) indicate an address for service in the State in question;

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

# EN 105 EN

### **CHAPTER XII** **THE OFFICE**

#### **SECTION 1** **G ENERAL PROVISIONS**

_Article 142_

**Legal status**

1.  1 The Office shall be an agency of the Union.  It shall have legal personality.

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

3. The Office shall be represented by its  2 Executive Director  .

_Article 143_

**Staff**

1. The Staff Regulations of officials of the  3 Union  (hereinafter referred to as ‘the Staff
Regulations’) the Conditions of Employment of other servants of the  3 Union , and the
rules adopted by agreement between the Institutions of the  3 Union  for giving effect to
those Staff Regulations and Conditions of Employment shall apply to the staff of the Office,
without prejudice to the application of Article 166  of this Regulation  to the members
of the Boards of Appeal.

 2424/2015 Art. 1.100

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.

# EN 106 EN

 207/2009
 1 2424/2015 Art. 1.5
 2 2424/2015 Art. 1.101
 3 2424/2015 Art. 1.2

_Article 144_

**Privileges and immunities**

The Protocol on the Privileges and Immunities of the  1 Union  shall apply  2 to the
Office and its staff  .

_Article 145_

**Liability**

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

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

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

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

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

_Article 146_

**Languages**

1. The application for an  3 EU trade mark  shall be filed in one of the official languages
of the  1 Union  .

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

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

If the application was filed in a language which is not one of the languages of the Office, the
Office shall arrange to have the application, as described in Article 31(1), translated into the
language indicated by the applicant.

# EN 107 EN

4. Where the applicant for an  3 EU trade mark  is the sole party to proceedings before the
Office, the language of proceedings shall be the language used for filing the application for an
 3 EU trade mark  . If the application was made in a language other than the languages of
the Office, the Office may send written communications to the applicant in the second
language indicated by the applicant in his application.

 2424/2015 Art. 1.102(a)

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.

 2424/2015 Art. 1.102(b)

6. Without prejudice to paragraph 5:

(a) any application or declaration relating to an EU trade mark application may be filed
in the language used for filing the application for that EU trade mark or in the second
language indicated by the applicant in his application;

(b) any application or declaration relating to a registered EU trade mark may be filed in
one of the languages of the Office.

However, when the application is filed by using any form provided by the Office as referred
to in Article 100(2), such forms may be used in any of the official languages of the Union,
provided that the form is completed in one of the languages of the Office, as far as textual
elements are concerned.

 207/2009
 1 2424/2015 Art. 1.102(c)
 2 2424/2015 Art. 1.5

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

If the language chosen, in accordance with paragraph 5, for the notice of opposition or the
application for revocation or invalidity is neither the language of the application for a trade
mark nor the second language indicated when the application was filed, the opposing party or
the party seeking revocation or invalidity shall be required to produce, at his own expense, a
translation of his application either into the language of the application for a trade mark,
provided that it is a language of the Office, or into the second language indicated when the
application was filed.  1 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.  The language into which the application has been translated shall then become
the language of the proceedings.

8. Parties to opposition, revocation, invalidity or appeal proceedings may agree that a
different official language of the  2 Union  is to be the language of the proceedings.

# EN 108 EN

 2424/2015 Art. 1.102(d)

9. Without prejudice to paragraphs 4 and 8, and unless provided otherwise, in written
proceedings before the Office any party may use any language of the Office. If the language
chosen is not the language of the proceedings, the party shall supply a translation into that
language within one month of the date of the submission of the original document. Where the
applicant for an EU trade mark is the sole party to proceedings before the Office and the
language used for the filing of the application for the EU trade mark is not one of the
languages of the Office, the translation may also be filed in the second language indicated by
the applicant in his application.

10. The Executive Director shall determine the manner in which translations are to be

certified.

11. The Commission shall adopt implementing acts specifying:

(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 207(2).

 207/2009 (adapted)
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.103
 3 2424/2015 Art. 1.5

_Article 147_

**Publication and entries in the Register**

1. An application for an  1 EU trade mark , as described in Article 31(1), and all other
information the publication of which is prescribed by this Regulation or  2 an act adopted
pursuant to this Regulation , shall be published in all the official languages of the
 3 Union  .

2. All entries in the Register shall be made in all the official languages of the  3 Union  .

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

# EN 109 EN

_Article 148_

 **Translation services** 

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

 2424/2015 Art. 1.105 (adapted)

_Article 149_

**Transparency**

1. Regulation (EC) No 1049/2001 of the European Parliament and of the Council [19] 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  TFEU  respectively.

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 [20] .

 2424/2015 Art. 1.106

_Article 150_

**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 [21] and 2015/444 [22] .
The security principles shall cover, inter alia, provisions for the exchange, processing and
storage of such information.

19 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).
20 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).
21 Commission Decision (EU, Euratom) 2015/443 of 13 March 2015 on Security in the Commission
(OJ L 72, 17.3.2015, p. 41).
22 Commission Decision (EU, Euratom) 2015/444 of 13 March 2015 on the security rules for protecting
EU classified information (OJ L 72, 17.3.2015, p. 53).

# EN 110 EN

 2424/2015 Art. 1.107

#### **SECTION 2** **T ASKS OF THE O FFICE AND COOPERATION TO PROMOTE CONVERGENCE**

_Article 151_

**Tasks of the Office**

1. The Office shall have the following tasks:

(a) administration and promotion of the EU trade mark system established in this
Regulation;

(b) administration and promotion of the European Union design system established in
Council Regulation (EC) No 6/2002 [23] ;

(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 [24] ;

(e) the tasks conferred on it under Directive 2012/28/EU of the European Parliament and
of the Council [25] .

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.

23 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ L 3, 5.1.2002,
p. 1).
24 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).
25 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).

# EN 111 EN

_Article 152_

**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);

(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.

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

# EN 112 EN

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 [26] and in Commission
Delegated Regulation (EU) No 1268/2012 [27] .

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_ .

 2424/2015 Art. 1.108

#### **SECTION 3** **M ANAGEMENT B OARD**

_Article 153_

**Functions of the Management Board**

1. Without prejudice to the functions attributed to the Budget Committee in Section 6, the
Management Board shall have the following functions:

(a) on the basis of a draft submitted by the Executive Director in accordance with
Article 157(4)(c), adopting the annual work programme of the Office for the coming
year, taking into account the opinion of the Commission, and forwarding the adopted
annual work programme to the European Parliament, to the Council and to the
Commission;

26 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).
27 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).

# EN 113 EN

(b) on the basis of a draft submitted by the Executive Director in accordance with
Article 157(4)(e) and taking into account the opinion of the Commission, adopting a
multiannual strategic programme for the Office, including the Office's strategy for
international cooperation, following an exchange of views between the Executive
Director and the relevant committee in the European Parliament, and forwarding the
adopted multiannual strategic programme to the European Parliament, to the Council
and to the Commission;

(c) on the basis of a draft submitted by the Executive Director in accordance with
Article 157(4)(g), adopting the annual report and forwarding the adopted annual
report to the European Parliament, to the Council, to the Commission and to the
Court of Auditors;

(d) on the basis of a draft submitted by the Executive Director in accordance with
Article 157(4)(h), adopting the multiannual staff policy plan;

(e) exercising the powers conferred on it under Article 152(2);

(f) exercising the powers conferred on it under Article 172(5);

(g) adopting rules on the prevention and management of conflicts of interest in the
Office;

(h) in accordance with paragraph 2, exercising, with respect to the staff of the Office, the
powers conferred by the Staff Regulations on the Appointing Authority and by the
Conditions of Employment 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;

(j) drawing up the list of candidates provided for in Article 158(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 210, as
well as from investigations of the European Anti-fraud Office (OLAF);

(l) being consulted before adoption of the guidelines for examination in the Office and
in the other cases provided for in this Regulation;

(m) providing opinions and requests for information to the Executive Director and to the
Commission where it considers it necessary.

2. The Management Board shall adopt, in accordance with Article 110 of the Staff
Regulations and Article 142 of the Conditions of Employment 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.

# EN 114 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 154_

**Composition of the Management Board**

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

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

_Article 155_

**Chairperson of the Management Board**

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

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

_Article 156_

**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 onethird of the Member States.

4. The Management Board shall adopt rules of procedure.

5. The Management Board shall take its decisions by an absolute majority of its members.
However, a majority of two-thirds of its members shall be required for the decisions which
the Management Board is empowered to take under Article 153(1)(a) and (b), Article 155(1)
and Article 158(2) and (4). In both cases each member shall have one vote.

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

# EN 115 EN

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

#### **SECTION 4** **E XECUTIVE D IRECTOR**

_Article 157_

**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 a 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;

(b) implementing the decisions adopted by the Management Board;

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

(d) submitting to the Management Board proposals pursuant to Article 152(2);

(e) preparing a draft multiannual strategic programme, including the Office's strategy for
international cooperation, and submitting it to the Management Board after
consultation of the Commission and following an exchange of views with the
relevant committee in the European Parliament;

(f) implementing the annual work programme and the multiannual strategic programme
and reporting to the Management Board on their implementation;

(g) preparing the annual report on the Office's activities and presenting it to the
Management Board for approval;

(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

# EN 116 EN

the OLAF, and reporting on progress twice a year to the Commission and to the
Management Board;

(j) protecting the financial interests of the Union by the application of 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 153(1)(h);

(o) exercising the powers conferred on him under Articles 31(3), 34(5), 35(3), 94(2),
97(5), Articles 98, 100, 101, Articles 111(4), 112(3), 114(5), Articles 115, 116,
Articles 120(4), 146(10), Article 178, Articles 179(1) and 180(2), and Article 181 in
accordance with the criteria set out in this Regulation and in the acts adopted
pursuant to this Regulation.

5. The Executive Director shall be assisted by one or more Deputy 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 158_

**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.

# EN 117 EN

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.

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.

 207/2009

#### **SECTION 5** **I MPLEMENTATION OF PROCEDURES**

_Article 159_

**Competence**

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

(a) examiners;

(b) Opposition Divisions;

 2424/2015 Art. 1.109(a)

(c) a department in charge of the Register;

 207/2009

(d) Cancellation Divisions;

(e) Boards of Appeal;

 2424/2015 Art. 1.109(b)

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

# EN 118 EN

 207/2009
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.110
 3 2424/2015 Art. 1.111(a)

_Article 160_

**Examiners**

An examiner shall be responsible for taking decisions on behalf of the Office in relation to an
application for registration of an  1 EU trade mark , including the matters referred to in
 2 Articles 41, 42, 76 and 85 , except in so far as an Opposition Division is responsible.

_Article 161_

**Opposition Divisions**

1. An Opposition Division shall be responsible for taking decisions on an opposition to an
application to register an  1 EU trade mark  .

2. The decisions of the Opposition Divisions shall be taken by three-member groups. At least
one member shall be legally qualified.  3 Decisions relating to costs or to procedures shall
be taken by a single member. 

 2424/2015 Art. 1.111(b)

The Commission shall adopt implementing acts specifying the exact types of decisions that
are to be taken by a single member. Those implementing acts shall be adopted in accordance
with the examination procedure referred to in Article 207(2).

 2424/2015 Art. 1.112

_Article 162_

**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 120(2).

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

# EN 119 EN

 207/2009

_Article 163_

**Cancellation Divisions**

 2424/2015 Art. 1.113(a)

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 21.

 207/2009
 1 2424/2015 Art. 1.113(b)

2. The decisions of the Cancellation Divisions shall be taken by three-member groups. At
least one member shall be legally qualified.  1 Decisions relating to costs or to procedures as
specified in the acts adopted pursuant to Article 161(2) shall be taken by a single member. 

 2424/2015 Art. 1.114

_Article 164_

**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.

 207/2009

_Article 165_

**Boards of Appeal**

 2424/2015 Art. 1.115(a)

1. The Boards of Appeal shall be responsible for deciding on appeals from decisions taken
pursuant to Articles 160 to 164.

# EN 120 EN

 207/2009
 1 2424/2015 Art. 1.115(b)

2. The decisions of the Boards of Appeal shall be taken by three members, at least two of
whom are legally qualified. In certain specific cases, decisions shall be taken  1 by the
Grand Board  chaired by the President of the Boards of Appeal or by a single member, who
must be legally qualified.

 2424/2015 Art. 1.115(c)

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 166(4)(a); or

(b) by the Board handling the case.

 2424/2015 Art. 1.115(d)

4. The Grand Board shall also be responsible for giving reasoned opinions on questions of law
referred to it by the Executive Director pursuant to Article 157(4)(l).

 207/2009

5. To determine which specific cases fall under the authority of a single member, account
should be taken of the lack of difficulty of the legal or factual matters raised, the limited
importance of the individual case or the absence of other specific circumstances. The decision
to confer a case on one member in the cases referred to shall be adopted by the Board
handling the case.

 2424/2015 Art. 1.116

_Article 166_

**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 158 for the appointment of
the Executive Director, for a term of five years. They shall not be removed from office during
this term, unless there are serious grounds for such removal and the Court of Justice, on
application by the 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 fiveyear periods, or until retirement age if this age is reached during the new term of office, after

# EN 121 EN

a prior positive evaluation of their performance by the Management Board, and after
consulting the President of the Boards of Appeal.

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

(a) chairing the 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.

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 165 shall be binding on the decision-making
instances of the Office referred to in Article 159.

9. The President of the Boards of Appeal and the chairpersons and members of the Boards of
Appeal shall not be examiners or members of the Opposition Divisions, the Department in
charge of the Register or Cancellation Divisions.

 2424/2015 Art. 1.117

_Article 167_

**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

# EN 122 EN

chairmen of the Boards. The number of Board members so elected shall constitute a quarter of
the number of Board members, other than the President of the Boards of Appeal and the
chairmen of the Boards, and that number shall be rounded up if necessary.

2. The Grand Board referred to in Article 165(2) shall comprise nine 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.

 2424/2015 Art. 1.118 (adapted)

_Article 168_

**Delegation of powers**

The Commission  is  empowered to adopt delegated acts in accordance with Article 208
specifying the details concerning the organisation of the Boards of Appeal, including the
setting up and the role of the Presidium, the composition of the Grand Board and the rules on
referrals to it, and the conditions under which decisions are to be taken by a single member in
accordance with Article 165(2) and (5).

 207/2009

_Article 169_

**Exclusion and objection**

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

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

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

4. The Divisions and the Boards of Appeal shall decide as to the action to be taken in the
cases specified in paragraphs 2 and 3 without the participation of the member concerned. For

# EN 123 EN

the purposes of taking this decision the member who withdraws or has been objected to shall
be replaced in the Division or Board of Appeal by his alternate.

 2424/2015 Art. 1.119

_Article 170_

**Mediation centre**

1. For the purposes of Article 151(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 or Regulation (EC)
No 6/2002, by mutual agreement.

3. The parties shall have recourse to mediation by means of a joint request. The request shall
not be deemed to have been filed until the corresponding charge has been paid. The Executive
Director shall fix the amount to be charged in accordance with Article 178(1).

4. In the case of disputes subject to the proceedings pending before the Opposition Divisions,
Cancellation Divisions or before the Boards of Appeal of the Office a joint request for
mediation may be presented at any time after the lodging of a notice of opposition, an
application for revocation or an 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.

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.

# EN 124 EN

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.

13. Mediators shall be impartial in the exercise of their duties and shall declare any real or
perceived conflict of interest upon their designation. Members of the decision-making
instances of the Office listed in Article 159 shall not take part in mediation concerning a case
in which they have:

(a) had any prior involvement in the proceedings referred to mediation;

(b) any personal interest in those proceedings; or

(c) been previously involved as a representative of one of the parties.

14. Mediators shall not take part as members of the decision-making instances of the Office
listed in Article 159 in proceedings resumed as a consequence of a mediation failure.

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

 207/2009

#### **SECTION 6** **B UDGET AND FINANCIAL CONTROL**

 2424/2015 Art. 1.120 (adapted)

_Article 171_

**Budget Committee**

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

2. Articles 154 and 155, Article 156(1) to (4), and (5), in so far as it relates to the election of
the chairperson and deputy chairperson, (6) and (7) shall apply to the Budget Committee,
_mutatis mutandis_ .

3. The Budget Committee shall take its decisions by an absolute majority of its members.
However, a majority of two-thirds of its members shall be required for the decisions which
the Budget Committee is empowered to take under Article 173(3) and Article 177. In both
cases each member shall have one vote.

# EN 125 EN

 2424/2015 Art. 1.121

_Article 172_

**Budget**

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

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

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 182 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 proceedings 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;

(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;

# EN 126 EN

(d) the annual number of cases brought before the EU trade mark courts designated by
each Member State in accordance with Article 123.

For the purpose of substantiating the costs referred to in paragraph 4, Member States shall
submit to the Office by 31 March of each year, statistical data demonstrating the figures
referred to in points (a) to (d) of the first subparagraph of this paragraph for the preceding
year, which shall be included in the proposal to be made to the Management Board.

On grounds of equity, the costs incurred by the bodies referred to in paragraph 4 in each
Member State shall be deemed to correspond to at least 2 % of the total offsetting provided
for under this paragraph.

6. The obligation by the Office to offset the costs referred to in paragraph 4 and incurred in a
given year shall only apply to the extent that no budgetary deficit occurs in that year.

7. In the event of a budgetary surplus, and without prejudice to paragraph 10, on a proposal by
the Office and after having consulted the Budget 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 151
and 152, where a substantive surplus is generated over five consecutive years, the Budget
Committee, upon a proposal from the Office and in accordance with the annual work
programme and multiannual strategic programme referred to in Article 153(1)(a) and (b),
shall decide by a two-thirds majority on the transfer to the budget of the Union of a surplus
generated from 23 March 2016.

9. The Office shall prepare on a biannual basis a report for the European Parliament, the
Council and the Commission on its financial situation, including on the financial operations
performed under Article 152(5) and (6), and Article 172(5) and (7). On the basis of that
report, the Commission shall review the financial situation of the Office.

10. The Office shall provide for a reserve fund covering one year of its operational
expenditure to ensure the continuity of its operations and the execution of its tasks.

 207/2009 (adapted)
 1 2424/2015 Art. 1.6
 2 2424/2015 Art. 1.5

_Article 173_

**Preparation of the budget**

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

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

# EN 127 EN

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

_Article 174_

**Audit and control**

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

2. The internal auditor shall advise the  1 Executive Director  on dealing with risks, by
issuing independent opinions on the quality of management and control systems and by
issuing recommendations for improving the conditions of implementation of operations and
promoting sound financial management.

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

 2424/2015 Art. 1.122 (adapted)

_Article 175_

**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 [28], the
Office shall accede to the Inter-institutional Agreement of 25 May 1999 concerning internal
investigations by OLAF, and adopt the appropriate provisions applicable to all the employees
of the Office using the template set out in the Annex to that Agreement.

2. The Court of Auditors shall have the power of audit, on the basis of 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 [29] 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.

28 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).
29 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).

# EN 128 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 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.

 207/2009 (adapted)
 1 2424/2015 Art. 1.6
 2 2424/2015 Art. 1.5

_Article 176_

**Auditing of accounts**

1. Not later than 31 March in each year the  1 Executive Director  shall transmit to the
Commission, the European Parliament, the Budget Committee and the Court of Auditors
accounts of the Office's total revenue and expenditure for the preceding financial year. The
Court of Auditors shall examine them in accordance with Article 248  TFEU  .

2. The Budget Committee shall give a discharge to the  1 Executive Director  in respect of
the implementation of the budget.

_Article 177_

**Financial provisions**

The Budget Committee shall, after consulting the Court of Auditors and the Commission,
adopt internal financial provisions specifying, in particular, the procedure for establishing and
implementing the Office's budget. As far as is compatible with the particular nature of the
Office, the financial provisions shall be based on the financial regulations adopted for other
bodies set up by the  2 Union  .

 2424/2015 Art. 1.123

_Article 178_

**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.

# EN 129 EN

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.

 2424/2015 Art. 1.124

_Article 179_

**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’;

(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.

# EN 130 EN

_Article 180_

**Deemed date of payment**

1. In the cases referred to in the first subparagraph of Article 179(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.

2. Where the methods of payment referred to in the second subparagraph of Article 179(1)
may be used, the Executive Director shall establish the date on which such payments are to be
considered to have been made.

3. Where, under paragraphs 1 and 2, payment of a fee is not considered to have been made
until after the expiry of the period in which it was due, it shall be considered that this period
has been observed if evidence is provided to the Office that the persons who made the
payment in a Member State, within the period within which the payment should have been
made, duly gave an order to a banking establishment to transfer the amount of the payment,
and paid a surcharge of 10 % of the relevant fee or fees, but not exceeding EUR 200. No
surcharge shall be payable if the relevant order to the banking 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 as referred to in paragraph 3 was given
and, where required, to pay the relevant surcharge within a period to be specified by it. If the
person fails to comply with that request or if the evidence is insufficient, or if the required
surcharge is not paid in due time, the period for payment shall be considered not to have been
observed.

_Article 181_

**Insufficient payments and refund of insignificant amounts**

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 amount
below which an excessive sum paid to cover a fee or a charge shall not be refunded.

# EN 131 EN

Determinations pursuant to the second subparagraph shall be published in the Official Journal
of the Office.

 207/2009 (adapted)
 1 2424/2015 Art. 1.125
 2 2424/2015 Art. 1.2
 3 2424/2015 Art. 1.5
 4 2424/2015 Art. 1.126(a)

### **CHAPTER XIII** **INTERNATIONAL REGISTRATION OF MARKS**

#### **SECTION I** **G ENERAL PROVISIONS**

_Article 182_

**Application of provisions**

Unless otherwise specified in this chapter, this Regulation and  1 the acts adopted pursuant
to this Regulation  shall apply to applications for international registrations under the
Protocol ‘international applications’ and ‘the Madrid Protocol‘ respectively), based on an
application for an  2 EU trade mark  or on an  2 EU trade mark  and to registrations of
marks in the international register maintained by the International Bureau of the World
Intellectual Property Organisation (hereafter referred to as ‘international registrations‘ and
‘the International Bureau’, respectively) designating the  3 Union  .

#### **SECTION 2** **I NTERNATIONAL REGISTRATION ON THE BASIS OF APPLICATIONS FOR** AN  2 EU TRADE MARK  AND OF  2 EU TRADE MARKS 

_Article 183_

**Filing of an international application**

1. International applications pursuant to Article 3 of the Madrid Protocol based on an
application for an  2 EU trade mark  or on an  2 EU trade mark  shall be filed at the
Office.

# EN 132 EN

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

_Article 184_

**Form and contents of the international application**

1. The international application shall be filed in one of the official languages of the
 3 Union , using a form provided by the Office.  4 The Office shall inform the applicant
filing the international application of the date on which the documents making up the
international application are received by the Office.  Unless otherwise specified by the
applicant on form when he files the international application, the Office shall correspond with
the applicant in the language of filing in a standard form.

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

 2424/2015 Art. 1.126(b)

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.

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.

# EN 133 EN

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 using 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;

(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.

 2424/2015 Art. 1.126(c)

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.

8. The Office shall forward the international application to the International Bureau along
with the certification provided for under Article 3(1) of the Madrid Protocol as soon as the
international application meets the requirements laid down in this Article, the implementing
act adopted pursuant to paragraph 9 of this Article, and in Article 183 of this Regulation.

9. The Commission shall adopt implementing acts specifying the exact form, including the
elements thereof, to be used for the filing of an international application pursuant to
paragraph 1. Those implementing acts shall be adopted in accordance with the examination
procedure referred to in Article 207(2).

# EN 134 EN

 207/2009
 1 2424/2015 Art. 1.2

_Article 185_

**Recordal in the files and in the Register**

1. The date and number of an international registration based on an  1 EU trade mark 
application shall be recorded in the files of that application. When the application results in an
 1 EU trade mark , the date and number of the international registration shall be entered in
the Register.

2. The date and number of an international registration based on an  1 EU trade mark 
shall be entered in the Register.

 2424/2015 Art. 1.127

_Article 186_

**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 207(2) of
this Regulation.

 2424/2015 Art. 1.128

_Article 187_

**Request for territorial extension subsequent to international registration**

1. A request for territorial extension made subsequent to an 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 184 of this Regulation. It shall include indications to substantiate the
entitlement to make a designation in accordance with Article 2(1)(ii) and Article 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

# EN 135 EN

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

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.

 207/2009 (adapted)
 1 2424/2015 Art. 1.5
 2 2424/2015 Art. 1.2

_Article 188_

**International fees**

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

#### **SECTION 3** I NTERNATIONAL REGISTRATIONS DESIGNATING THE  1 U NION 

_Article 189_

**Effects of international registrations designating the**  **1** **Union** 

1. An international registration designating the  1 Union  shall, from the date of its
registration pursuant to Article 3(4) of the Madrid Protocol or from the date of the subsequent
designation of the  1 Union  pursuant to Article 3 _ter_ (2) of the Madrid Protocol, have the
same effect as an application for an  2 EU trade mark  .

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

3. For the purposes of applying Article  11 of this Regulation , publication of the
particulars of the international registration designating the  1 Union  pursuant to
Article 190(1) shall take the place of publication of an  2 EU trade mark  application, and

# EN 136 EN

publication pursuant to Article 190(2) shall take the place of publication of the registration of
an  2 EU trade mark  .

_Article 190_

**Publication**

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

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

 2424/2015 Art. 1.129

_Article 191_

**Seniority claimed in an international application**

1. The applicant for an international registration designating the Union may claim, in the
international application, the seniority of an earlier trade mark registered in a Member State,
including a trade mark registered in the Benelux countries, or registered under international
arrangements having effect in a Member State, as provided for in Article 39.

2. The documentation, as specified in the implementing act adopted pursuant to Article 39(6),
in support of the seniority claim shall be submitted within three months of the date on which
the International Bureau notifies the international registration to the Office. In this regard,
Article 39(7) shall apply.

3. Where the holder of the international registration is obliged to be represented before the
Office pursuant to Article 119(2), the communication as referred to in paragraph 2 of
this Article shall contain the appointment of a representative within the meaning of
Article 120(1).

4. Where the Office finds that the seniority claim under paragraph 1 of this Article does not
comply with Article 39, or does not comply with the other requirements laid down in
this Article, it shall invite the applicant to remedy the deficiencies. If the requirements
referred to in the first sentence are not 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.

# EN 137 EN

5. The Office shall inform the International Bureau of any declaration of a loss of the right of
seniority pursuant to paragraph 4. It shall also inform the International Bureau of any
withdrawal or restriction of the seniority claim.

6. Article 39(5) shall apply, unless the right of seniority is declared lost pursuant to
paragraph 4 of this Article.

 2424/2015 Art. 1.130

_Article 192_

**Seniority claimed before the Office**

1. The holder of an international registration designating the Union may, as from the date of
publication of the effects of such registration pursuant to Article 190(2), claim at the Office
the seniority of an earlier trade mark registered in a Member State, including a trade mark
registered in the Benelux countries, or registered under international arrangements having
effect in a Member State, as provided for in Article 40.

2. When the seniority is claimed before the date referred to in paragraph 1, the seniority claim
shall be deemed to have been received by the Office on that date.

3. A seniority claim under paragraph 1 of this Article shall fulfil the requirements referred to
in Article 40 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 to be specified by the Office, the Office shall
reject the claim.

5. Where the Office has accepted the seniority claim, or where a seniority claim has been
withdrawn or cancelled by the Office, the Office shall inform the International Bureau
accordingly.

6. The Commission shall adopt implementing acts specifying the details to be contained in a
seniority claim under paragraph 1 of this Article and the details of the information to be
notified pursuant to paragraph 5 of this Article. Those implementing acts shall be adopted in
accordance with the examination procedure referred to in Article 207(2).

 2424/2015 Art. 1.131

_Article 193_

**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 33(2), (3) and (4) and to absolute grounds for refusal in the same way
as applications for EU trade marks.

# EN 138 EN

2. Where an international registration designating the Union is found to be ineligible for
protection pursuant to Article 33(4) or Article 42(1) of this 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.

3. Where the holder of an international registration is obliged to be represented before the
Office pursuant to Article 119(2), the notification referred to in paragraph 2 of this Article
shall contain an invitation to appoint a representative within the meaning of Article 120(1).

4. The notification of provisional refusal shall state the reasons on which it is based, and shall
specify a time period by which the holder of the international registration may submit his
observations and, if appropriate, shall appoint a 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 206 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 an international registration fails to overcome the ground for refusing
protection within the time limit or, if appropriate, to appoint a representative or to indicate a
second language, the Office shall refuse the protection in whole or for part of the goods and
services for which the 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 66 to 72.

7. Where, as of the start of the opposition period referred to in Article 196(2), the Office has
not issued an _ex officio_ provisional notification of refusal 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 42 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 207(2).

 2424/2015 Art. 1.132 (adapted)

_Article 194_

**Collective and certification marks**

1. Where an international registration is based on a basic application or basic registration
relating to a collective mark, certification mark or guarantee mark, the international

# EN 139 EN

registration designating the Union shall be dealt with as an EU collective mark or as
an EU certification mark, whichever is applicable.

2. The holder of the international registration shall submit the regulations governing the use of
the mark, as provided for in Articles 75 and 84, directly to the Office within two months of
the date on which the International Bureau notifies the international registration to the Office.

3. The Commission  is  empowered to adopt delegated acts in accordance with
Article 208 specifying the details of the procedure concerning international registrations
based on a basic application or basic registration relating to a collective mark, certification
mark or guarantee mark.

 207/2009
 1 2424/2015 Art. 1.5
 2 2424/2015 Art. 1.133(a)
 3 2424/2015 Art. 1.133(b)
 4 2424/2015 Art. 1.2
 5 2424/2015 Art. 1.133(c)

_Article 195_

**Search**

1. Once the Office has received a notification of an international registration designating the
 1 Union , it shall draw up a  1 Union  search report as provided for in Article 43(1)
 2 provided that a request for a search report, pursuant to Article 43(1), is made to the Office
within one month of the date of notification  .

2. As soon as the Office has received a notification of an international registration designating
the  1 Union , the Office shall transmit a copy thereof to the central industrial property
office of each Member State which has informed the Office of its decision to operate a search
in its own register of trade marks as provided for in Article 43(2)  3 provided that a request
for a search report, pursuant to Article 43(2), is made to the Office within one month of the
date of notification and the search fee is paid within the same period  .

3. Article 43(3) to (6) shall apply _mutatis mutandis_ .

4. The Office shall inform the proprietors of any earlier  4 EU trade marks  or
 4 EU trade mark  applications cited in the  1 Union  search report of the publication
of the international registration designating the  1 Union  as provided for in
Article 190(1).  5 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. 

_Article 196_

**Opposition**

1. International registration designating the  1 Union  shall be subject to opposition in the
same way as published  4 EU trade mark  applications.

# EN 140 EN

 2424/2015 Art. 1.134(a)

2. Notice of opposition shall be filed within a period of three months which shall begin one
month following the date of the publication pursuant to Article 190(1). The opposition shall
not be considered as duly entered until the opposition fee has been paid.

 207/2009
 1 2424/2015 Art. 1.2

3. Refusal of protection shall take the place of refusal of an  1 EU trade mark  application.

 2424/2015 Art. 1.134(b)
(adapted)

4. The Commission  is  empowered to adopt delegated acts in accordance with
Article 208 specifying the procedure for the filing and examination of an opposition,
including the necessary communications to be made to the International Bureau.

 207/2009
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.5

_Article 197_

**Replacement of an**  **1** **EU trade mark**  **by an international registration**

The Office shall, upon request, enter a notice in the Register that an  1 EU trade mark  is
deemed to have been replaced by an international registration in accordance with Article 4 _bis_
of the Madrid Protocol.

_Article 198_

**Invalidation of the effects of an international registration**

1. The effects of an international registration designating the  2 Union  may be declared
invalid.

2. The application for invalidation of the effects of an international registration designating
the  2 Union  shall take the place of an application for a declaration of revocation as
provided for in Article 58 or for a declaration of invalidity as provided for in Article 59 or
Article 60.

 2424/2015 Art. 1.135

3. Where pursuant to Article 64 or Article 128 of this Regulation and this Article, the effects
of an international registration designating the Union have been declared invalid by means of
a final decision, the Office shall notify the International Bureau in accordance with
Article 5(6) of the Madrid Protocol.

# EN 141 EN

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 207(2).

 2424/2015 Art. 1.136

_Article 199_

**Legal effect of registration of transfers**

The recordal of a change in the ownership of an international registration on the International
Register shall have the same effect as the entry of a transfer in the Register pursuant to
Article 20.

_Article 200_

**Legal effect of registration of licences and other rights**

The recordal of a licence or a restriction of the holder's right of disposal in respect of an
international registration in the International Register shall have the same effect as the
registration of a right _in rem_, a levy of execution, insolvency proceedings or a licence in the
Register pursuant to Articles 22, 23, 24 and 25 respectively.

_Article 201_

**Examination of requests for registration of transfers, licences or restrictions of**
**a holder's right of disposal**

The Office shall transmit requests to register a change in ownership, a licence or a restriction
of the holder's right of disposal, the amendment or 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.

# EN 142 EN

 207/2009
 1 2424/2015 Art. 1.5

_Article 202_

**Conversion of a designation of the**  **1** **Union**  **through an international registration**
**into a national trade mark application or into a designation of Member States**

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

(a) into a national trade mark application pursuant to Articles 139, 140 and 141;

 2424/2015 Art. 1.137(a)

(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 139, 140 and 141 of
this Regulation shall apply.

 2424/2015 Art. 1.137(b)

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 191
of this Regulation.

 207/2009

3. The request for conversion shall be published.

 2424/2015 Art. 1.137(c)

4. The request for conversion of an international registration designating the Union into a
national trade mark application shall include the information and indications referred to in
Article 140(1).

5. Where conversion is requested pursuant to this Article and Article 139(5) of this
Regulation following a failure to renew the international registration, the request referred to in
paragraph 4 of this Article shall contain an indication to that effect and the date on which the
protection expired. The period of three months provided for in Article 139(5) of this
Regulation shall begin to run on the day following the last day on which the renewal may still
be effected pursuant to Article 7(4) of the Madrid Protocol.

# EN 143 EN

6. Article 140(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 140(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 140(1), is deemed to have been received by the Office.

9. Where the request for conversion referred to in paragraph 7 complies with the requirements
of this Regulation and rules adopted pursuant to it, the Office shall transmit the request
without delay to the International Bureau. The Office shall inform the holder of the
international registration of the date of transmission.

10. The Commission shall adopt implementing acts specifying:

(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 207(2).

 207/2009
 1 2424/2015 Art. 1.5
 2 2424/2015 Art. 1.2

_Article 203_

**Use of a mark subject of an international registration**

For the purposes of applying Article 18(1), Article 47(2), Article 58(1)(a) and Article 64(2),
the date of publication pursuant to Article 190(2) shall take the place of the date of
registration for the purpose of establishing the date as from which the mark which is the
subject of an international registration designating the  1 Union  must be put to genuine
use in the  1 Union  .

_Article 204_

**Transformation**

1. Subject to paragraph 2, the provisions applicable to  2 EU trade mark  applications
shall apply _mutatis mutandis_ to applications for transformation of an international registration

# EN 144 EN

into an  2 EU trade mark  application pursuant to Article 9 _quinquies_ of the Madrid
Protocol.

2. When the application for transformation relates to an international registration designating
the  1 Union  the particulars of which have been published pursuant to Article 190(2),
Articles 42 to 47 shall not apply.

 2424/2015 Art. 1.138

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.

4. Where, in the course of the examination in accordance with Article 41(1)(b), the Office
finds that the application was not filed within three months of the date on which the
international registration was cancelled by the 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 207(2).

 2424/2015 Art. 1.139

_Article 205_

**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, and preferably be by electronic means. Any
reference to forms shall be construed as including forms made available in electronic format.

_Article 206_

**Use of languages**

For the purpose of applying this Regulation, and rules adopted pursuant to it, to international
registrations designating the Union, the language of filing of the international application
shall be the language of the proceedings within the meaning of Article 146(4), and the second
language indicated in the international application shall be the second language within the
meaning of Article 146(3).

# EN 145 EN

 207/2009

### **CHAPTER XIV** **FINAL PROVISIONS**

 2424/2015 Art. 1.141

_Article 207_

**Committee Procedure**

1. The Commission shall be assisted by a Committee on Implementation Rules. That
committee shall be a committee within the meaning of Regulation (EU) No 182/2011.

2. Where reference is made to this paragraph, Article 5 of Regulation (EU) No 182/2011 shall
apply.

 2424/2015 Art. 1.142 (adapted)

_Article 208_

**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 power  to adopt delegated acts  referred to in Article 48, Article 49(3),
Articles 65 and 73, Articles 96(4), 97(6), 98(5), 100(2), 101(5), 103(3), and 106(3),
Articles 121 and 168, and Articles 194(3) and 196(4) shall be conferred on the Commission
for an indeterminate period of time from 23 March 2016.

3. The delegation of power referred to in  Article 48, Article 49(3), Articles 65 and 73,
Articles 96(4), 97(6), 98(5), 100(2), 101(5), 103(3), and 106(3), Articles 121 and 168, and
Articles 194(3) and 196(4)  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. Before adopting a delegated act, the Commission shall carry out consultations with
experts, including experts designated by each Member State in accordance with the principles
laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making. 

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

# EN 146 EN

6. A delegated act adopted pursuant to Article 48, Article 49(3), Articles 65 and 73,
Articles 96(4), 97(6), 98(5), 100(2), 101(5), 103(3), and 106(3), Articles 121 and 168, and
Articles 194(3) and 196(4) shall enter into force only if no objection has been expressed either
by the European Parliament or  by  the Council within a period of two months of
notification of that act to the European Parliament and the Council or if, before the expiry of
that period, the European Parliament and the Council have both informed the Commission
that they will not object. That period shall be extended by  two  months at the initiative
of the European Parliament or  of  the Council.

 207/2009
 1 2424/2015 Art. 1.5

_Article 209_

**Provisions relating to the enlargement of the**  **1** **Union** 

 2012 Accession Act,
Annex III.2(I)
 1 2424/2015 Art. 1.2
 2 2424/2015 Art. 1.5

1. As of the date of accession of Bulgaria, the Czech Republic, Estonia, Croatia, Cyprus,
Latvia, Lithuania, Hungary, Malta, Poland, Romania, Slovenia and Slovakia (hereinafter
referred to as ‘new Member State(s)’), an  1 EU trade mark  registered or applied for
pursuant to this Regulation before their respective date of accession shall be extended to the
territory of those Member States in order to have equal effect throughout the  2 Union  .

 207/2009 (adapted)
 1 2424/2015 Art. 1.2

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

3. Where an application for the registration of an  1 EU trade mark  has been filed during
the six months prior to the date of accession, notice of opposition may be given pursuant to
Article 46 where an earlier trade mark or another earlier right within the meaning of Article 8
was acquired in a new Member State prior to accession, provided that it was acquired in good
faith and that the filing date or, where applicable, the priority date or the date of acquisition in
the new Member State of the earlier trade mark or other earlier right precedes the filing date
or, where applicable, the priority date of the  1 EU trade mark  applied for.

4. An  1 EU trade mark  as referred to in paragraph 1 may not be declared invalid:

(a) pursuant to Article 59 if the grounds for invalidity became applicable merely because
of the accession of a new Member State;

(b) pursuant to Article 60(1) and (2) if the earlier national right was registered, applied
for or acquired in a new Member State prior to the date of accession.

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5. The use of an  1 EU trade mark  as referred to in paragraph 1 may be prohibited
pursuant to Articles 137 and 138, if the earlier trade mark or other earlier right was registered,
applied for or acquired in good faith in the new Member State prior to the date of accession of
that State; or, where applicable, has a priority date prior to the date of accession of that State.

 2424/2015 Art. 1.144

_Article 210_

**Evaluation and review**

1. By 24 March 2021, and every five years thereafter, the Commission shall evaluate the
implementation of this Regulation.

2. The evaluation shall review the legal framework for cooperation between the Office and the
central industrial property offices of the Member States and the Benelux Office for
Intellectual Property, paying particular attention to the financing mechanism laid down in
Article 152. The evaluation shall further assess the impact, effectiveness and efficiency of the
Office and its 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.

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.

 207/2009 (adapted)

_Article 211_

**Repeal**

Regulation (EC) No  207/2009  is repealed.

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

_Article 212_

**Entry into force**

This Regulation shall enter into force on the  twentieth  day following  that of  its
publication in the _Official Journal of the European Union_ .

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 2424/2015 Art. 4 (adapted)
 1 corrigendum OJ L 71,
16.3.2016, p. 322

 It  shall apply from 1 October 2017.

# EN 149 EN

 207/2009

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

Done at Brussels,

_For the European Parliament_ _For the Council_
_The President_ _The President_

# EN 150 EN