CELEX: 51984PC0470
Language: en
Date: 1984-07-31
Title: AMENDED PROPOSAL FOR A COUNCIL REGULATION ON THE COMMUNITY TRADE MARK

31. 8. 84                             Official Journal of the European Communities                              No C 230/1
                                                                  II
                                                          (Preparatory Acts)
                                                     COMMISSION
                       Amended proposal for a Council Regulation on the Community trade mark
                                                         COM(84) 470 final
               (Submitted by the Commission to the Council pursuant to Article 149 (2) of the EEC Treaty on
                                                           9 August 1984)
                                                           (84/C 230/01)
                      ORIGINAL PROPOSAL                                                   AMENDED PROPOSAL
THE COUNCIL OF THE EUROPEAN COMMUNITIES,                              Unchanged.
Having regard to the Treaty establishing the European                 Unchanged.
Economic Community, and in particular Article 235
thereof,
Having regard to the proposal from the Commission,                    Having    regard     to   the    proposal    from   the
                                                                      Commission (*),
Having regard to the opinion            of the       European         Having regard     to the opinion      of the   European
Parliament,                                                           Parliament ( 2 ),
Having regard to the opinion of the Economic and Social               Having regard to the opinion of the Economic and Social
Committee,                                                            Committee ( 3 ),
Whereas:                                                              Whereas:
It is desirable to promote throughout the Community a                 Unchanged.
harmonious development of economic activities and a
continuous and balanced expansion by establishing a
common market which functions properly and offers
conditions which are similar to those obtaining in a
national market. In order to create a market of this kind
and make it increasingly a single market, not only must
the barriers to free movement of goods and services be
removed and arrangements be instituted which ensure
that competition is not distorted, but, in addition, legal
conditions must be created which enable undertakings to
adapt their activities to the scale of the Community,
whether in manufacturing and distributing goods or in
providing services. For those purposes, trade marks
                                                                      (') OJ No C 351, 31. 12. 1980, p. 1.
enabling the products and service of undertakings to be
                                                                      (2) OJ No C 307, 14. 11. 1983, p. 46.
distinguished by identical means t h r o u g h o u t the entire       (3) OJ No C 310, 30. 11. 1981, p. 22.
 ---pagebreak---  No C 230/2                             Official Journal of the European Communities                                31. 8. 84
                       ORIGINAL PROPOSAL                                                AMENDED PROPOSAL
 Community, regardless of frontiers, should feature
 amongst the legal instruments which undertakings have
 at their disposal.
 Action by the Community would appear to be necessary              Unchanged.
 for the purpose of attaining the Community's said
 objectives. Such action involves the creation of
 Community arrangements for trade marks whereby
 undertakings can by means of one system of procedure
 obtain Community trade marks to which uniform
 protection is given and which produce their effects
 throughout the entire area of the Community.
The Treaty does not provide the requisite powers to                Unchanged.
create a legal instrument such as a Community trade
mark. 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
these circumstances the only appropriate way of opening
up urestricted economic activity in the whole of the
common market for the benefit of undertakings is to
create trade marks which are governed solely by a law of
the Community, that law being directly applicable in all
Member States.
The Community law relating to trade marks nevertheless             Unchanged.
does not replace the laws of the Member States on trade
marks, for at the stage to which the establishment of the
common market has now advanced it would not appear
to be proper to require undertakings to apply for
registration of their trade marks as Community trade
marks. National trade marks do in fact continue to be
necessary for those undertakings whose activities are such
that protection of their trade marks at Community level is
of no use to them.
 In order not to detract from the unity of the system of           Unchanged.
 Community trade marks and from the primacy of the
 Community law which governs them, such trade marks
 must not be subject to the laws of the Member States, save
 in so far as this Regulation expressly provides.
 The rights in a Community trade mark are not to be                The rights in a Community trade mark are not to be
 capable of being obtained otherwise than by registration,         capable of being obtained otherwise than by registration,
 and registration is to be refused if the trade mark is not        and registration is to be refused if the trade mark is not
 distinctive, is unlawful or is not available. In the latter       distinctive, is unlawful or is not available. In the latter
 case the Office should not withold registration unless the        case the Office should not withhold registration as a
 prior right which conflicts with the trade mark is a trade        Community trade mark unless the proprietor of the
 mark which is registered and used in the common market,           earlier right with which the trade mark conflicts has
 if the proprietor of the prior right has entered opposition       entered admissible opposition to its registration and all
 to registration of the trade mark as a Community trade            efforts to produce an amicable settlement between the
 mark and all efforts to produce an amicable settlement            parties have failed.
 between the parties have failed.
 The interests of proprietors of prior private rights which         The interests of proprietors of prior rights will also be
 have not been registered will also be protected, whatever          protected, whatever those rights may be, for any
 those rights may be, for any proprietor of a prior right,          proprietor of a prior right, whether registered or not, is
 whether registered or not, is entitled to claim that a             entitled to claim that a Community trade mark, once
 Community trade mark, once registered, is invalid. It              registered, is invalid.
 ---pagebreak--- 31. 8. 84                               Official Journal of the European Communities                               No C 230/3
                       ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
may in due time be appropriate, depending particularly
on the degree of integration then achieved by the
Community, to contemplate new measures for the
purpose of settling conflicts between Community trade
marks and prior rights existing at national level.
The protection conferred by a Community trade mark is              Unchanged.
bound up with the concept of similarity of signs,
similarity of goods and services and the possibility of
confusion arising therefrom. The purpose of protection is
to guarantee the trade mark's function as an indicator of
origin. It is essential that the said concepts be interpreted
strictly so that the freedom of action of persons who are in
competition with each other is not needlessly restricted. It
is necessary, in particular, that by simultaneous
comparison of signs, goods and services it be certain in
each case that customers are in reality likely to confuse
products and services which are identified by those signs.
For the purpose of determining whether a sign which is
alleged to infringe a trade mark which consists of a
number of elements is so similar to it that confusion may
arise between them, the trade mark must be viewed as a
whole. In order to determine whether a Community trade
mark and a sign consisting of words sound the same or are
at any rate phonetically similar, it is not possible to
disregard the fact that the Community exists and that the
public is increasingly aware of the correct pronunciation
of words in the languages which are spoken therein.
In view of the fact that the function of a Community trade          It follows from the principle of free flow of goods that the
mark is to indicate origin the proprietor must not be               proprietor of a Community trade mark must not be
entitled to prohibit its use by a third party in relation to        entitled to prohibit its use by a third party in relation to
foods which have been put into circulation in the                   goods which have been put into circulation in the
Community or outside it, under the trade mark, by him or            Community, under the trade mark, by him or with his
with his consent, nor to prohibit its use, for reasons based        consent, nor to prohibit its use, for reasons based on trade
on trade mark law, by a licensee who supplies the goods             mark law, by a licensee who supplies the goods or services
or services under the trade mark outside the territory              under the trade mark outside the territory covered by the
covered by the licence.                                             licence.
There is no justification for protecting Community trade            Unchanged.
marks or, as against them, any trade mark which has been
registered before them, except where the trade marks are
actually used.
A Community trade mark is to be regarded as an object of            A Community trade mark is to be regarded as an object of
property which exists separately from the undertaking               property which exists separately from the undertaking
whose products or services are designated by it.                    whose goods or services are designated by it.
Accordingly, a Community trade mark must be capable                 Accordingly, a Community trade mark must, subject to
of being, inter alia, transferred to, or charged as security        the overriding need to prevent deception of consumers, be
in favour of, a third party and of being the subject-matter         capable of being, inter alia, transferred to, or charged as
of licences. The conditions applicable for revocation and           security in favour of, a third party and of being the
invalidity of trade marks must also be regulated in a               subject-matter of licences. The conditions applicable for
uniform manner.                                                     revocation and invalidity of trade marks must also be
                                                                    regulated in a uniform manner.
 Decisions regarding the validity of Community trade                Decisions regarding the validity and infringement of
marks must have absolute effect and cover the entire area           Community trade marks must have effect and cover the
 ---pagebreak--- No C 230/4                            Official Journal of the European Communities                                 3 1 . 8. 84
                      ORIGINAL PROPOSAL                                               AMENDED PROPOSAL
of the common market, for this is the only way of                entire area of the Community for this is the only way of
preventing inconsistent decisions on the part of the courts      preventing inconsistent decisions on the part of the courts
and the Office and of ensuring that the unitary character        and the Office and of ensuring that the unitary character
of Community trade marks is not undermined. The rules            of Community trade marks is not undermined. The rules
contained in the Convention on Jurisdiction and                  contained in the Convention on jurisdiction and
Enforcement of Judgments in Civil and Commercial                 enforcement of judgments in civil and commercial
Matters apply to all actions at law relating to Community        matters apply to all actions at law relating to Community
trade marks, save where this Regulation derogates from           trade marks, save where this Regulation derogates from
those rules.                                                     those rules.
Administrative measures are necessary at Community               Unchanged.
level for implementing in relation to every trade mark the
trade mark law created by this Regulation. It is therefore
essential, while retaining the Community's existing
institutional structure and balance of powers, to establish
a Community Trade Marks Office which is independent
in relation to technical matters and has legal,
administrative and financial autonomy. To this end it is
necessary and appropriate that it should be a body of the
Community having legal personality and exercising the
precisely delimited implementing powers which are
conferred on it by this Regulation, and that it should
operate within the framework of Community law
without detracting from the competences exercised by the
Community's institutions.
In order to ensure that parties who are affected by              Unchanged.
decisions made by the Office are protected by the law in a
manner which is entirely suited to the special character of
trade mark law, it is necessary to establish, within the
Office, boards of appeal composed of three independent
members who are qualified in law and who will be
responsible for examining, from the point of view of both
substance and law, the decisions made by the Office's
divisions.
In order to ensure that in interpreting and applying this        Unchanged.
Regulation the law is observed, the decisions made by the
boards of appeal must be open to appeal to the Court of
Justice. This judicial control must be available even in
cases where none of the parties appeals against an
erroneous decision made by a board of appeal. The
Commission must in such cases be enabled to enter an
appeal in the Court of Justice in the interest of the
law.
 The institutional structure of the Community, the               Unchanged.
balance of powers and the democratic control of the
 Office's budget can only be maintained if the Assembly
 and the Council adopt the Office's budget in conformity
with the provisions contained in the Treaty which relate
to the adoption of the budget of the European
 Communites, and utilize, in relation to the Office's
 revenue and expenditure, together with the Court of
Auditors, the powers of control which are conferred by
 the Treaty.
 ---pagebreak--- 31. 8. 84                                Official Journal of the European Communities                          No C 230/5
                      ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
 HAS ADOPTED THIS REGULATION:
                           TITLE I                                                            TITLE I
                 GENERAL PROVISIONS                                                GENERAL PROVISIONS
                          Article 1                                                          Article 1
                 [Community trade mark]                                             [Community trade mark]
1.     A trade mark for goods or services which conforms            Unchanged.
with the conditions contained in this Regulation and is
registered in manner herein provided is hereinafter
referred to as a 'Community trade mark'.
2.     A Community trade mark shall have identical effect
throughout the Community. No trade mark shall be
registered as a Community trade mark otherwise than for
the entire area of the Community; a Community trade
mark shall not be 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 entire area of the Community.
                          Article 2                                                          Article 2
            [Community Trade Marks Office]                                      [Community Trade Marks Office]
For the purpose of the application of this Regulation a             Unchanged.
Community Trade Marks Office, hereinafter referred to
as 'the Office', is hereby established.
                           TITLE II                                                          TITLE II
     THE LAW RELATING T O TRADE MARKS                                    THE LAW RELATING T O TRADE MARKS
                         Section 1                                                          Section 1
     DEFINITION OF A COMMUNITY TRADE MARK                                DEFINITION OF A COMMUNITY TRADE MARK
       OBTAINING A COMMUNITY TRADE MARK                                   OBTAINING A COMMUNITY TRADE MARK
                          Article 3                                                          Article 3
 [Signs of which a Community trade mark may consist]                 [Signs of which a Community trade mark may consist]
A Community trade mark may consist of words                         A Community trade mark may consist of any signs,
(including surnames), designs, letters, numerals,                   particularly words, including personal names, designs,
combinations of colours, the shape of goods or of their             letters, numerals, combinations of colours, the shape of
packaging, or of any other signs which are capable of               goods or of their packaging, which are capable of
distinguishing the goods or services of one undertaking             distinguishing the goods or services of one undertaking
from those of other undertakings.                                   from those of other undertakings.
                          Article 4                                                          Article 4
     [Persons who can be proprietors of Community                        [Persons who can be proprietors of Community
                        trade marks]                                                       trade marks]
 1.    The following persons may be proprietors of                   1.    The following persons may be proprietors of
Community trade marks:                                              Community trade marks:
(a) nationals of any Member State, and nationals of any              (a) nationals of the Member States;
     non-member State who are habitually resident in the
     Community or who have a real and effective
     industrial or commercial place of business in the
     Community;
 ---pagebreak--- No C 230/6                            Official Journal of the European Communities                                31. 8. 84
                      ORIGINAL PROPOSAL                                                AMENDED PROPOSAL
(b) nationals of any State which is party to the Paris           (b) nationals of any State which is party to the Paris
     Convention for the Protection of Industrial Property,            Convention for the protection of industrial property,
     hereinafter referred to as the Paris Convention, and             hereinafter referred to as 'the Paris Convention';
     persons who are deemed to be such by the operation
     of Article 3 thereof;
(c) nationals of any other State which accords to                (c) nationals of States which are not party to the Paris
    nationals of the Member States the same trade mark                Convention:
    protection as it accords to its own nationals.
                                                                      — who are domiciled or who have real and effective
                                                                         industrial or commercial establishments on the
                                                                         territory of the Community or of a State which is
                                                                         party to the Paris Convention, or
                                                                      — when these States accord to nationals of all the
                                                                         Member States the same trade mark protection as
                                                                         they accord to their own nationals.
2.     Legal persons, including those companies and               2.    Unchanged.
associations which under the law that governs them are
regarded as legal persons, shall be treated as nationals
within the meaning of paragraph 1.
                           Article 5                                                       Article 5
[Means whereby the rights in a Community trade mark              [Means whereby the rights in a Community trade mark
                        are obtained]                                                    are obtained]
The rights in a Community trade mark are obtained by             Unchanged.
registration.
                           Article 6                                                        Article 6
               [Absolute grounds for refusal]                                   [Absolute grounds for refusal]
1.     Trade marks which do not conform to the                    1.    Unchanged.
requirements of Article 3 or 4, and trade marks which are
not distinctive, shall not be registered; in particular the
following trade marks shall not be registered:
(a) those which consist solely of signs or indications
     which in trade may be requisite for the purpose of
     showing the kind, quality, quantity, intended
     purpose, value, geographical origin, the time of
     production of the goods or of rendering of the service,
     or other characteristics of the goods or service;
 (b) those which consist solely of signs or indications
     which are customarily used to designate the goods or
     service in the current language of the trade or in the
      bona fide and established practices thereof.
2.     In addition, the following shall not be registered:        2.    In addition, the following shall not be registered:
(a) the shape which results from the nature of the goods          (a) Unchanged;
     themselves, or which has some technical
     consequence; also the shape of the goods where this
     affects their intrinsic value;
 ---pagebreak--- 31. 8. 84                               Official Journal of the European Communities                                 No C 230/7
                      ORIGINAL PROPOSAL                                                     AMENDED PROPOSAL
(b) trade marks which include signs or indications liable           (b) trade marks which are liable to mislead the public
     to mislead the public, particularly as to the nature,               particularly as to the nature, quality or geographical
     quality or geographical origin of the goods or                       origin of the goods or service;
      service;
(c) trade marks which are contrary to public policy or to          (c) trade marks which are contrary to public policy or to
     accepted principles of morality, and those which fall               accepted principles of morality, or those which have
    within the provisions or Article 6 ter of the Paris                 not been authorized by the competent authorities and
     Convention.                                                         are to be refused pursuant to Article 6 ter of the Paris
                                                                         Convention;
                                                                    (d) trade marks which include badges, emblems and
                                                                          escutcheons other than those covered by Article 6 ter
                                                                          of the Paris Convention and of public interest,
                                                                          specified in the implementing Regulation.
 3.     Paragraphs 1 and 2 shall apply, nothwithstanding             3.      Paragraphs 1 and 2 shall apply, notwithstanding
 that the grounds of non-registrability obtain in only part         that the grounds of non-registrability obtain in only part
 of the common market.                                               of the Community.
 4.      Paragraph 1 (a) shall not apply if the trade mark has       4.      Paragraph 1 (a) shall not apply if the trade mark has
 become distinctive in consequence of the use which has              become distinctive in relation to the goods or services for
 been made of it.                                                    which registration is requested in consequence of the use
                                                                     which has been made of it.
                            Article 7                                                            Article 7
                [Relative grounds for refusal]                                       [Relative grounds for refusal]
 1.     A trade mark shall not be registered if it is identical      1.      A trade mark shall not be registered:
 with or similar to an earlier trade mark, and the goods or
                                                                     (a) if it is identical with an earlier right, and the goods or
 services designated by each of the trade marks are
                                                                          services are identical with those for which the earlier
 identical with or similar to each other with the result
                                                                          right was registered in the cases referred to in
 that there arises a serious likelihood of confusion on the
                                                                          paragraph 2 (a) or (b) or has been used in the cases
 part of the public in the territory in which the earlier trade
                                                                          referred to in paragraph 2 (c) or (d);
 mark has effect.
                                                                     (b) if it is identical with an earlier right, and the goods or
                                                                           services are similar to those for which the earlier right
                                                                           was registered in the cases referred to in paragraph 2
                                                                           (a) or (b) or has been used in the cases referred to in
                                                                           paragraph 2 (c) or (d), with the result that there arises
                                                                           a likelihood of confusion between the Community
                                                                           trade mark applied for and the earlier right on the
                                                                           part of the public in the territory in which the earlier
                                                                           right has effect;
                                                                    (c) if it is similar to an earlier right, and the goods or
                                                                          services are identical with or similar to those for
                                                                          which the earlier right was registered in the cases
                                                                          referred to in paragraph 2 (a) or (b) or has been used
                                                                          in the cases referred to in paragraph 2 (c) or (d), with
                                                                          the result that there arises a likelihood of confusion
                                                                          between the Community trade mark applied for and
                                                                          the earlier right on the part of the public in the
                                                                          territory in which the earlier right has effect.
 ---pagebreak--- No C 230/8                             Official Journal of the European Communities                                   31. 8. 84
                       ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
2.      Earlier trade marks are trade marks of the                 2.     An 'earlier right' means:
 following kinds in respect of which the date of application
 for registration preceded the date of application for             (a) trade marks of the following kinds in respect of which
 registration of the Community trade mark, taking                       the date of application for registration preceded the
 account, where appropriate, of the priorities claimed in               date of application for registration of the Community
 respect of those trade marks:                                          trade mark, taking account, where appropriate, of
                                                                        the priorities claimed in respect of those trade
                                                                        marks:
(a) Community trade marks;                                              — Community trade marks,
(b) trade marks registered in a Member State, including                 — trade marks registered in a Member State,
      those registered in the Benelux countries;                            including those registered in the Benelux
                                                                            countries,
(c) trade marks registered under arrangements which                    — trade marks registered under international
     have effect in a Member State;                                         arrangements which have effect in a Member
                                                                            State;
and trade marks which, on the date on which application           (b) application for the trade marks referred to in (a),
is made for registration of them as Community trade                     subject to their registration;
marks are well known in a Member State, in the sense in
which the words 'well known' are used in Article 6 bis of          (c) trade marks which, on the date of application for
the Paris Convention.                                                  registration of the Community trade mark are well
                                                                       known in Member State, in the sense in which the
                                                                       words 'well known' are used in Article 6a of the Paris
                                                                       Convention;
                                                                   (d) any signs used in the business world before the
                                                                        application for registration of the Community trade
                                                                        mark which, under the law of the Member State
                                                                        governing them, confer on their proprietor the right
                                                                        to prohibit the use of subsequent trade marks;
                                                                   (e) any signs containing:
                                                                       — the name of a third person, where use of this name
                                                                            in relation to the goods or services for which the
                                                                            Community trade mark is applied for is liable to
                                                                            cause serious detriment to the honour, reputation
                                                                            or credit of that person,
                                                                       — a portrait of a third person,
                                                                       — a work of a third person protected by copyright or
                                                                            by an industrial model or design,
                                                                   so however, that in any opposition based on such a sign
                                                                   a likelihood of confusion does not need to be
                                                                   established.
 3.     Where an agent or representative of the rightful            3.     Unchanged.
 proprietor of a trade mark applies for registration thereof
 in his own name without the proprietor's consent,
 registration shall be refused unless the agent or
 representative justifies his action.
  4.     This Article applies only where the proprietor of the      4.     This Article applies only where the proprietor of an
  earlier trade mark, or of a trade mark to which paragraph         earlier right within the meaning of paragraph 2, which
  3 applies, has been successful in opposing registration of        does not subsist only in a particular locality, or of a trade
  the Community trade mark, his opposition having been in           mark to which paragraph 3 applies, has been successful in
  conformity with the provisions of this Regulation.                opposing registration of the Community trade mark, his
                                                                    opposition having been in conformity with the provisions
                                                                    of this Regulation.
 ---pagebreak--- 31. 8. 84                              Official Journal of the European Communities                              No C 230/9
                      ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
                         Section 2                                                         Section 2
        EFFECTS OF COMMUNITY TRADE MARKS                                   EFFECTS OF COMMUNITY TRADE MARKS
                           Article 8                                                         Article 8
     [Rights conferred by a Community trade mark]                      [Rights conferred by a Community trade mark]
1.      A Community trade mark confers on the proprietor          1.      A Community trade mark confers on the proprietor
exclusive rights therein. The proprietor shall be entitled        exclusive rights therein. The proprietor shall be entitled
to prohibit any third party from using in the course of           to prohibit any third party from using in the course of
trade, save with his consent:                                     trade, save with his consent:
(a) any sign which is identical with or similar to the            (a) any sign which is identical with the Community trade
     Community trade mark in relation to goods or                      mark in relation to goods or services which are
     services which are identical with or similar to those             identical with those for which the Community trade
     for which the Community trade mark is registered,                 mark is registered;
     where such use involves a serious likelihood of
     confusion on the part of the public;
(b) any sign which is identical with or similar to the            (b) any sign which is identical with the Community trade
     Community trade mark in relation to goods or                      mark in relation to goods or services which are
     services which are not similar to those for which the             similar to those for which the Community trade mark
     Community trade mark is registered, where the                     is registered where because of the similarity of the
     Community trade mark is of wide repute and use of                 goods or services, such use involves a likelihood of
     that sign is detrimental to that repute.                          confusion between the sign and the Community trade
                                                                       mark on the part of the public;
                                                                  (c) any sign which is similar to the Community trade
                                                                       mark in relation to goods or services which are
                                                                       identical with or similar to those for which the
                                                                       Community trade mark is registered, where because
                                                                       of the similarity of the signs and the identity or
                                                                       similarity of the goods or services such use involves a
                                                                       likelihood of confusion between the sign and the
                                                                       Community trade mark on the part of the public;
                                                                  (d) any sign which is identical with or similar to the
                                                                       Community trade mark in relation to goods or
                                                                        services which are not similar to those for which the
                                                                        Community trade mark is registered, where the latter
                                                                        is of wide repute in the Community and where use of
                                                                       that sign would constitute unwarranted exploitation
                                                                        of the commercial value and the repute of the
                                                                        Community trade mark.
 2.     Use of the following kinds, inter alia, may be             2.      The following, inter alia, may be prohibited under
 prohibited under paragraph 1:                                     paragraph 1:
 (a) affixing the sign to the goods or to the packaging
      thereof;                                                     (a) Unchanged;
 (b) putting the goods on the market under that sign, or
      supplying services thereunder;                               (b) Unchanged;
 (c) using the sign on business correspondence or
      invoices.                                                    (c) using the sign on business papers.
 3.      The rights conferred by a Community trade mark                     Unchanged.
 shall prevail against third parties from the date of
 publication of registration of the trade mark. Reasonable
 compensation may however be claimed in respect of
 ---pagebreak--- No C 230/10                            Official Journal of the     lean Communities                               3 1 . 8. 84
                      ORIGINAL PROPOSAL                                              AMENDED PROPOSAL
 matters arising after the date of publication of a
 Community trade mark application, which matters
 would, after publication of registration of the trade mark,
 be prohibited by virtue of that publication. The court
 seized of the case shall stay the proceedings until the
 registration has been published.
                          Article 9                                                       Article 9
       [Reproduction of Community trade marks in                       [Reproduction of Community trade marks in
                        dictionaries]                                                   dictionaries]
 1.     The publisher of a dictionary, encyclopaedia or         1.      The publisher of a dictionary encyclopaedia or
similar work shall ensure that any reproduction of a           similar work shall ensure that any reproduction of a
Community trade mark therein is accompanied by an              Community trade mark therein is accompanied by an
indication that the trade mark is registered.                  indication that the trade mark is registered, where the
                                                               reproduction of this trade mark in such works gives the
                                                               impression that it constitutes the generic name of the
                                                               goods or services for which the trade mark is
                                                               registered.
2.      Where the publisher fails to comply with the           2.       Unchanged.
requirements of paragraph 1 he shall, at the request of the
proprietor of the Community trade mark, correct the
matter at his own expense in the next edition of the
publication.
                         Article 10                                                      Article 10
 [Limitation of the effects of a Community trade mark]          [Limitation of the effects of a Community trade mark]
A Community trade mark does not entitle the proprietor         A Community trade mark does not entitle the proprietor
to prohibit a third party from using in the course of          to prohibit a third party from using in the course of
trade:                                                         trade:
(a) his own surname and address;                               (a) his own name and address;
(b) indications concerning the kind, quality, quantity,        (b) Unchanged;
     intended purpose, value, geographical originx the
     time of production of the goods or of rendering of
     the service, or other characteristics of the goods or
     service;
(c) the trade mark for the purpose of indicating the           (c) the trade mark where it is necessary to indicate the
     intended purpose of accessories or spare parts;                 intended purpose of a product or service, in particular
                                                                     accessories or spare parts;
provided he does not use them as a trade mark.
                                                               provided he uses them in accordance with honest
                                                               industrial or commercial practice.
                         Article 11                                                      Article 11
[Limits of the rights conferred by a Community trade           [Limits of the rights conferred by a Community trade
                           mark]                                                           mark]
1.     A Community trade mark does not entitle the             1.      A Community trade mark does not entitle the
proprietor to prohibit its use in relation to goods which      proprietor to prohibit its use in relation to goods which
have been put on the market under that trade mark by the       have been put on the market in the Community under that
proprietor or with his consent.                                trade mark by the proprietor or with his consent.
2.     Paragraph 1 shall not apply:                            2.      Paragraph 1 shall not apply where the condition of
                                                               the goods is changed or impaired after they have been put
(a) where, the goods having been put on the market             on the market.
     outside the Community, the proprietor is legally
 ---pagebreak--- 31. 8. 84                             Official Journal of the European Communities                               No C 230/11
                      ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
     entitled to oppose their importation into the
     Community;
(b) where the condition of the goods is changed or
      impaired after they have been put on the market;
(c) where the goods are repackaged by a third party; but
     this provision shall not apply where the third party
     proves that the use made of the trade mark by the
     proprietor, taking into consideration his system of
     marketing, tends to fragment the markets artificially
     and that the repackaging could not affect the original
     condition of the goods, if the third party informs the
     proprietor beforehand that the repackaged goods are
     to be put on the market and the new packaging
     indicates that the goods have been repackaged by the
     third party.
                          Article 12                                                         Article 12
[Supplementary application of national law relating to           [Supplementary application of national law relating to
                        infringement]                                                      infringement]
1.      The effects of Community trade marks shall be             1.      The effects of Community trade marks shall be
governed solely by the provisions of this Regulation. Save       governed solely by the provisions of this Regulation. Save
as otherwise herein provided, the civil sanctions for             as otherwise herein provided, the infringements of a
infringement of a Community trade mark shall be                   Community trade mark shall be governed by the law of
governed by the law on civil sanctions for infringement of        Member States relating to infringement of a national
a national trade mark which applies in the Member State           trade mark in the Member State in which the Court
in which the court hearing the action is located.                 hearing the action is located.
                                                                   1 a.      This Regulation shall not prevent the proprietor of
                                                                  a Community trade mark from bringing actions in respect
                                                                  of that mark under the law of Member States relating in
                                                                  particular to civil liability and unfair competition,
                                                                  provided that such actions are not brought on the same
                                                                  grounds as those contained in Articles 8 and 9.
2.      The rules of procedure to be applied shall be             2.       Unchanged
determined in accordance with Article 76 and the Articles
which follow it.
                          Section 3                                                          Section 3
           USE OF COMMUNITY TRADE MARKS                                       USE OF COMMUNITY TRADE MARKS
                           Article 13                                                        Article 13
 1.     A Community trade mark shall be put to serious use         1.      If, within a period of five years following
 in the common market, consistently with the terms of this         registration, the proprietor has not put the Community
 Regulation, in connection with the goods or services in           trade mark to genuine use in the Community in
 respect of which it is registered, unless there exist             connection with the goods or services in respect of which
 legitimate reasons for not doing so.                              it is registered, or if such use has been suspended during
                                                                   an uninterrupted period of five years, the Community
                                                                   trade mark shall be subject to the sanctions provided for
 ---pagebreak---  No C 230/12                          Official Journal of the European Communities                                 3 1 . 8. 84
                     ORIGINAL PROPOSAL                                                AMENDED PROPOSAL
                                                                 in this Regulation, unless there exist legitimate reasons
                                                                 for non-use.
                                                                 la.     The following shall also constitute use for the
                                                                purposes of paragraph 1:
                                                                (a) use of the Community trade mark in a form differing
                                                                     in elements which do not alter the distinctive
                                                                     character of the mark in the form in which it was
                                                                     registered;
                                                                (b) affixing of the Community trade mark to products or
                                                                     to the packaging thereof in the Community solely for
                                                                     export purposes.
2.     Circumstances arising independently of the will of       2.      Unchanged.
the proprietor of a Community trade mark are alone
sufficient to constitute legitimate reasons for not using
it.
3.     Use of a Community trade mark by a licensee or by        3.     Use of the Community trade mark with the consent
a person who is associated economically with the                of the proprietor shall be deemed to constitute use by the
proprietor shall be deemed to constitute use by the             proprietor.
proprietor.
                       Section 4                                                        Section 4
    DURATION AND ALTERATION OF COMMUNITY                           DURATION AND ALTERATION OF COMMUNITY
                     TRADE MARKS                                                      TRADE MARKS
                         Article 14                                                       Article 14
                [Duration of registration]                                       [Duration of registration]
Community trade marks shall be registered for a period of       Community trade marks shall be registered for a period of
10 years from the date of filing of the application.            10 years from the date of filing of the application.
Without prejudice to the application of Article 37,             Registration may be renewed in accordance with Article
registration may be renewed for further periods of 10           37 for further periods of 10 years.
years.
                         Article IS                                                       Article IS
                        [Alteration]                                                     [Alteration]
 1.    No alteration of a Community trade mark shall be         1.     The Community trade mark shall not be altered in
allowed during the period of registration or on renewal         the register during the period of registration or on renewal
thereof.                                                        thereof.
2.     Where, however, a Community trade mark                   2.     Where, however, the Community trade mark
includes the name and address of the proprietor, these          includes the name and address of the proprietor, any
may be altered, provided the alteration does not                alteration thereof, provided it does not substantially
substantially change the trade mark. Any alteration shall       change the trade mark, may be registered at the request of
be registered.                                                  the proprietor.
                                                                3.     The publication of the registration shall contain a
                                                                representation of the Community trade mark as altered.
                                                                Third parties whose rights may be affected by the
                                                                alteration may challenge the registration thereof within a
                                                                period of three months following publication.
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                      ORIGINAL PROPOSAL                                                  AMENDED PROPOSAL
                         Section 5                                                          Section 5
     COMMUNITY TRADE MARKS AS OBJECTS OF                                 COMMUNITY TRADE MARKS AS OBJECTS OF
                         PROPERTY                                                           PROPERTY
                          Article 16                                                         Article 16
[Dealing with Community trade marks as national trade               [Dealing with Community trade marks as national trade
                           marks]                                                             marks]
1.     Unless Articles 17 to 22 otherwise provide, a                1.     Unless Articles 17 to 22 provide otherwise, a
Community trade mark as an object of property shall be              Community trade mark as an object of property shall be
regarded in all respects, including its geographical                dealt with in its entirety, and for the whole area of the
coverage of the entire area of the Community, as a trade            Community, as a national trade mark registered in the
mark registered in the Member State in which, according             Member State in which, according to the Register of
to the Register of Community trade marks, the applicant             Community trade marks:
had his habitual residence or principal place of business
or, failing either of these, a place of business, on the date       (a) the applicant had his domicile or principal place of
of filing of the Community trade mark application.                       business on the date of filing of the Community trade
                                                                         mark application, or
                                                                    (b) where subparagraph (a) does not apply, the applicant
                                                                         had a place of business on that date.
2.      In cases which are not provided for by paragraph 1          2.     Unchanged.
the Member State referred to in that paragraph shall be
the Member State in which the headquarters of the Office
is situated.
                                                                    3.     If two or more persons are mentioned in the
                                                                    Register of Community trade marks as joint applicants,
                                                                    paragraph 1 shall apply to the joint applicant first
                                                                    mentioned; failing this, it shall apply to the subsequent
                                                                    joint applicants in the order in which they are mentioned.
                                                                    Where paragraph 1 does not apply to any of the joint
                                                                    applicants, paragraph 2 shall apply.
                          Article 17                                                         Article 17
                          [Transfer]                                                         [Transfer]
 1.     A Community trade mark may be transferred,                          Unchanged.
 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,           2.     A transfer of the whole of the undertaking shall,
 unless some other intention appears, have effect to                 unless otherwise agreed or unless some other intention
 transfer any Community trade mark of the                            appears clearly from the circumstances, include the
 undertaking.                                                        transfer of the Community trade mark. This provision
                                                                     shall apply to the contractual obligation to transfer the
                                                                     undertaking.
 3.      Without prejudice to paragraph 2, an assignment of          3.     Without prejudice to paragraph 2, an assignment of
 a Community trade mark shall be made in writing;                    the Community trade mark shall be made in writing and
 otherwise it shall be void.                                         shall require the signature of the parties to the contract,
                                                                     except when it is a result of a judgment.
 ---pagebreak--- N o C 230/14                            Official Journal of the European Communities                                  31. 8. 84
                      ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
4.     Where it is clear from the transfer documents that          4.     Where it is clear from the transfer documents that
because of the transfer the Community trade mark will              because of the transfer the Community trade mark is
mislead the public concerning the nature, quality or               likely to mislead the public concerning the nature, quality
geographical origin of the goods or services in respect of          or geographical origin of the goods or services in respect
which it is registered, the Office shall not register the           of which it is registered, the Office shall not register the
transfer.                                                          transfer unless the new proprietor agrees to limit
                                                                   registration of the Community trade mark to goods or
                                                                   services in respect of which it is not likely to mislead.
5.     A transfer shall not affect rights acquired by third        5.     Unchanged.
parties before the date of transfer.
6.     A transfer shall not take effect vis-ct-vis the Office or   6.     Unchanged.
third parties until it has been registered, and then only to
the extent that the transfer documents require. A transfer
shall nevertheless take effect before registration vis-a-vis
third parties who have acquired rights in the trade mark
after the date of transfer but who knew of the transfer at
the date on which they acquired those rights.
                          Article 18                                                        Article 18
                        [Rights in rem]                                                   [Rights in rem]
1.     A Community trade mark may be charged as                     Unchanged,
security or otherwise be the subject security rights in rem,
separately from the undertaking.
2.     Security rights in rem which are created over a
Community trade mark, and any transfer of those rights,
shall not have effect vis-a-vis third parties until the rights
have been registered, or until the transfer has been
registered, as the case may be.
                          Article 19                                                        Article 19
                     [Levy of execution]                                               [Levy of execution]
1.     A Community trade mark be levied in execution                Unchanged,
and be the subject of enforcement measures following
thereon, separately from the undertaking.
2.     As regards the procedure for enforcement measures
in respect of a Community trade mark, the courts and
authorities of the Member State which is relevant for the
purposes of Article 16 shall have exclusive jurisdiction.
                          Article 20                                                        Article 20
           [Insolvency and similar proceedings]                               [Insolvency and similar proceedings]
 Until such time as common rules are in operation between           Unchanged.
the Member States, the only Member State in which a
Community trade mark may form part of the assets in an
 ---pagebreak--- 31. 8. 84                                 Official Journal of the European Communities                            No C 230/15
                     ORIGINAL PROPOSAL                                                    AMENDED PROPOSAL
insolvency or in similar proceedings shall be the Member
State in which those proceedings are first opened.
                         Article 21                                                            Article 21
                         [Licensing]                                                           [Licensing]
1.     Licenses may be granted in respect of a Community             Unchanged.
trade mark for some or all of the goods or services for
which it is registered.
2.     The rights conferred by a Community trade mark                2.     The rights conferred by a Community trade mark
shall not be asserted vis-a-vis a licensee unless he operates        may be invoked against a licensee only if he contravenes
his licence beyond the period of time for which it was               the limits on his licence with regard to its duration or to
granted or uses the trade mark in relation to goods or               the licenced scope of the goods or services for which the
services for which it has not been registered or does not            trade mark is registered or does not comply with the
comply with the proprietor's instructions concerning the             proprietor's instructions in respect of the quality of the
quality of the goods or services.                                    goods or services.
3.     The proprietor of a Community trade mark shall                3.     The proprietor of a Community trade mark shall
ensure that the quality of the goods manufactured or of              take adequate measures to ensure that the quality of the
the services provided by the licensee is the same as that of         goods manufactured or of the services provided by the
the goods manufactured or of the services provided by the            licensee conforms with his instructions.
proprietor.
4.     Paragraphs 5 and 6 of Article 17 apply to                     4.      Unchanged.
licences.
                          Article 22                                                            Article 22
[The right of property in an application for a Community              [The right of property in an application for a Community
                        trade mark]                                                           trade mark]
Articles 16 to 21 apply to applications for Community                 Unchanged.
trade marks.
                          TITLE III                                                             TITLE III
     APPLICATIONS FOR COMMUNITY TRADE                                     APPLICATIONS FOR COMMUNITY TRADE
                           MARKS                                                                 MARKS
                         Section 1                                                            Section 1
    FILING OF APPLICATION AND THE CONDITIONS                             FILING OF APPLICATION AND THE CONDITIONS
                 WHICH GOVERN THEM                                                    WHICH GOVERN THEM
                          Article 23                                                            Article 23
                  [Filing of applications]                                              [Filing of applications]
An application for a Community trade mark shall be filed              Unchanged.
 at the Office.
                          Article 24                                                            Article 24
           [Conditions governing applications]                                   [Conditions governing applications]
 1.    The following, inter alia, shall be included in an             1.     The following, inter alia, shall be included in an
 application for a C o m m u n i t y trade m a r k :                  application for a Community trade mark:
 ---pagebreak---  No C 230 /16                           Official Journal of the ropean Communities                              3 1 . 8. 84
                       ORIGINAL PROPOSAL                                               AMENDED PROPOSAL
 (a) particulars identifying the applicant;                       (a) information identifying the applicant;
 (b) a list of the goods or services;                            (b) Unchanged;
 (c) a representation of the trade mark;                         (c) Unchanged;
 (d) where paragraph 2 of Article 72 applies, the relevant       (d) (deleted).
      power of attorney.
 2.     The fees shall be paid upon filing of the                2.     The minimum amount of fees shall be paid within
 application.                                                    one month after the filing of the application.
                          Article 25                                                      Article 25
                       [Date of filing]                                                 [Date of filing]
The date of filing of a Community trade mark application         The date of filing of a Community trade mark application
shall be the date on which the documents specified in            shall be the date on which the documents specified in
Article 24 are received, provided the minimum fees have         Article 24 (1) are received.
at that date been received by the Office.
                         Section 2                                                        Section 2
                          PRIORITY                                                        PRIORITY
                          Article 26                                                      Article 26
                     [Right of priority]                                              [Right of priority]
1.     A person who has duly filed an application for a         Unchanged.
trade mark in or for any State which is a party to the Paris
Convention, or his successors in title, shall, for the
purpose of filing a Community trade mark application for
the same trade mark in respect of goods or services which
are identical with those for which the application has been
filed, be entitled to a right of priority for a period of six
months following the date of filing of the first
application.
2.     Every filing which 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 recognized as giving rise to a right of priority.
3.     Regular national filing means any filing which is
sufficient to establish the date on which the application
was made, whatever 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 for the
same State, shall, for the purpose of determining priority,
be considered as first application, provided that at the
date of filing of the subsequent application, the previous
application has been withdrawn, abandoned or refused,
without leaving any rights outstanding, and no right of
 ---pagebreak--- 31. 8. 84                                 Official Journal of the European Communities                               No C 230/17
                          ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
priority has been claimed in respect of it. No right of
priority shall thereafter be claimed in respect of the
previous application.
5.      If the first filing has been made in a State which is
not a party to the Paris Convention, paragraphs 1 to 4
shall apply only in so far as that State grants on the basis
of a first filing made at the Office a right of priority which
is subject to conditions equivalent to those laid down in
the Paris Convention and which has equivalent effect.
                              Article 27                                                        Article 27
                        [Claiming priority]                                               [Claiming priority]
An applicant who wishes to take advantage of the priority             An applicant desiring to take advantage of the priority of
of a previous application shall file a declaration of                 a previous application shall file a declaration of priority.
priority. The Office may require production of a copy of              The Office may require production of a copy of the
the previous application and, if necessary, a translation of          previous application and, if necessary, a translation of it
it in the Office's procedural language.                               in the Office's procedural language.
                             Article 28                                                        Article 28
                         [Right of priority]                                               [Right of priority]
The right of priority shall operate so that the date of first         The right of priority shall have the effect that the date of
filing shall be treated as the date of filing of the                  priority shall count as the date of filing of the Community
Community trade mark application, save for purposes of                trade mark application for the purposes of establishing
the application of Article 14.                                        which rights take precedent.
                              Article 29                                                        Article 29
  [Equivalence of Community filing and national filing]                 [Equivalence of Community filing and national filing]
For purposes of the application of Article 4 of the Paris             A Community trade mark application which has been
 Convention, a Community trade mark application which                  accorded a date of filing shall, in the Member States, be
 has been accorded a date of filing shall, in the Member              equivalent to a regular national filing, where appropriate
 States, be equivalent to a regular national filing.                  with the priority claimed for the Community trade mark
                                                                       application.
                              TITLE IV                                                          TITLE IV
               REGISTRATION PROCEDURE                                             REGISTRATION PROCEDURE
                             Section 1                                                         Section 1
              EXAMINATION OF APPLICATIONS                                        EXAMINATION OF APPLICATIONS
                              Article 30                                                        Article 30
 [Examination as to whether the application satisfies the              [Examination as to whether the application satisfies the
                relevant substantive conditions]                                    relevant substantive conditions]
 1.      A Community trade mark application shall be                   1.    The Office shall examine whether:
 rejected if it cannot be accorded a date of filing because
 the relevant conditions have not been satisfied.                      (a) the Community trade mark application satisfies the
                                                                           requirements for the accordance of a date of filing;
 ---pagebreak--- No C 230/18                           Official Journal of the European Communities                                   3 1 . 8. 84
                     ORIGINAL PROPOSAL                                                  AMENDED PROPOSAL
                                                                 (b) the Community trade mark application is regular as
                                                                       to form;
                                                                 (c) the fees due have been paid in the prescribed
                                                                      periods.
2.     A Community trade mark application which is               2.      Where the Community trade mark application does
irregular as to form, or in respect whereof the amount of        not satisfy the requirements referred to in paragraph 1,
fees paid is equal to the minimum fee chargeable but less        the Office shall give the applicant an opportunity to
than the prescribed fee, shall be rejected. No rights of         correct the deficiencies.
priority may be claimed in respect of an application where
the priority provisions contained in this Regulation have
not been complied with.
3.     Paragraph 2 shall not apply until the applicant has       3.      If the deficiencies referred to in paragraph 1 (a) are
been requested to correct the irregularities or to pay the       not remedied in the prescribed period, the application
prescribed amount of fees.                                       shall not be dealt with as a Community trade mark
                                                                 application. Where the applicant complies with the
                                                                 invitation of the Office to remedy these deficiencies, the
                                                                 date of filing accorded to the application shall be the date
                                                                 on which the deficiencies are remedied.
                                                                 4.      If the deficiencies referred to in paragraph 1 (b)
                                                                 or (c) are not remedied in the prescribed period, the
                                                                 application shall be refused.
                                                                 5.      Where the requirements concerning the claim to
                                                                 priority have not been satisfied, the right of priority shall
                                                                 be lost for the application.
                         Article 31                                                          Article 31
    [Examination as to absolute grounds for refusal]                  [Examination as to absolute grounds for refusal]
 1.    Where, under Article 6, a trade mark is ineligible         1.      Unchanged.
for registration in respect of some or all of the goods or
services covered by the Community trade mark
application, the application shall be rejected as regards
those goods or services.
2.     Where the trade mark includes an element which is          2.     Where the trade mark contains an element which is
not distinctive, registration of the trade mark may be            not distinctive, and where the inclusion of that element in
subject to the applicant's agreeing, if the Office requested      the trade mark could give rise to doubts as to the scope of
him to do so, that his rights in the trade mark are not           protection of the trade mark, the Office may, as a
exclusive.                                                        condition for registration of that trade mark, require that
                                                                  the applicant states that he disclaims any exclusive right
                                                                  to such element. Any disclaimer shall be published
                                                                  together with the application or the registration of the
                                                                  Community trade mark, as the case may be.
3.     The application shall not be rejected before the           3.      Unchanged.
applicant has been allowed the opportunity of
withdrawing or amending the application or of
submitting his observations on the matter.
4.     The application shall be published in respect of the       4.      Unchanged.
goods or services for which it is not ineligible for
registration.
 ---pagebreak--- 31. 8. 84                             Official Journal of the European Communities                             No C 230/19
                     ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
5.     Where, after publication, the application is rejected            Unchanged.
under paragraphs 1 or 2, the decision that it has been
rejected shall, upon becoming final, be published.
                         Article 32                                                         Article 32
                [Amendment of application]                                        [Amendment of application]
A Community trade mark application may, upon request,             1.     The applicant may at any time withdraw his
be amended by restricting the list of goods or services, or       Community trade mark application or restrict the list of
by rectifying the name and address of the applicant, errors      goods or services contained therein. Where the
of wording or of copying, or other obvious mistakes,              application has already been published, the withdrawal
provided that such rectification does not substantially           or restriction shall also be published.
change the trade mark.
                                                                  2.     In other respects, a Community trade mark
                                                                  application may only be amended upon request of the
                                                                  applicant by rectifying the name and address of the
                                                                  applicant, errors of wording or of copying, or other
                                                                  obvious mistakes, provided that such rectification 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; Article 15 (3) shall apply mutatis mutandis.
                         Section 2                                                          Section 2
         OBSERVATIONS BY THIRD PARTIES AND                                 OBSERVATIONS BY THIRD PARTIES AND
                        OPPOSITION                                                         OPPOSITION
                          Article 33                                                         Article 33
               [Observations by third parties]                                   [Observations by third parties]
 Any natural or legal person and any group or body                 1.     Following the publication of the Community trade
 representing manufacturers, producers, traders or                 mark application, any natural or legal person and any
 consumers may, after publication of a Community trade             group or body representing manufacturers, producers,
 mark application, submit to the Office written                    suppliers of services, traders or consumers may submit to
 observations explaining on which grounds, under                   the Office written observations explaining on which
 Article 6, the trade mark is ineligible for registration.         grounds, under Article 6, the trade mark is ineligible for
                                                                   registration. They shall not be parties to the proceedings
                                                                   before the Office.
                                                                   2.     The observations referred to in paragraph 1 shall be
                                                                   communicated to the applicant who may comment on
                                                                   them.
                          Article 34                                                         Article 34
                        [Opposition]                                                       [Opposition]
 1.     Proprietors of trade marks of the kinds referred           1.     Within a period of three months following the
 to in Article 7 may, within three months following                publication of a Community trade mark application,
 publication of a Community trade mark application,                notice of opposition to registration of the trade mark may
 enter opposition to registration of the trade mark.               be given on the grounds that it may not be registered
 Registration may be opposed only on grounds of                    under Article 7:
 ineligibility under Article 7.
 ---pagebreak---  No C 230/20                             Official Journal of the European Communities                                    31. 8. 84
                        ORIGINAL PROPOSAL                                                  AMENDED PROPOSAL
                                                                     (a) by the proprietors of earlier rights referred to in
                                                                         Article 7 (2) (a) to (d) as well as licensees authorized
                                                                         by the proprietor;
                                                                     (b) by the proprietors of earlier rights referred to in
                                                                         Article 7 (2) (e) or the persons who are entitled under
                                                                         the law of Member States to exercise the rights in
                                                                         question;
                                                                    (c) by the proprietors of trade marks referred to in
                                                                         Article 7 (3).
2.     Opposition shall be expressed in writing and shall           2.      Unchanged,
specify the grounds on which it is made. It shall not be
treated as duly entered until the opposition fee has been
paid.
3.     If the opposing party has no habitual residence or           3.     If the opponent has neither his domicile nor a place
place of business within the Community he shall, if the             of business within the Community he shall, at the request
applicant so requests, provide security for the costs of the        of the applicant, furnish security for the costs of the
proceedings. The amount of security and the date by                 proceedings. The Office shall fix the amount of the
which it must be provided shall be determined by the                security and the period within which it must be deposited.
Office. If security is not provided, the opposition shall be        If the security is not deposited within the period specified,
treated as having been withdrawn.                                   the opposition shall be deemed to be withdrawn.
                           Article 35                                                          Article 35
                [Examination of opposition]                                         [Examination of opposition]
 1.    When examining the opposition the Office shall               1.     In the examination of the opposition the Office
invite the parties to submit their observations.                    shall invite the parties to file their observations.
2.     If the applicant so requests or the Office so requires,      2.     If the applicant so requests or the Office so requires,
the proprietor of an earlier Community trade mark who               the proprietor of an earlier Community trade mark who
has entered an opposition shall furnish proof that that             has given notice of opposition shall furnish proof that,
trade mark has been used in manner required by Article              during the period of five years preceding the date of
13 during the period of five years preceding the date of            publication of the Community trade mark application,
publication of the Community trade mark application,                the earlier Community trade mark has been put to
provided the earlier Community trade mark has at that               genuine use in the Community in connection with the
date been registered for not less than five years. In the           goods or services in respect of which it is registered, or
absence of proof to this effect, the opposition shall be            that there exist legitimate reasons for non-use, provided
rejected. If the earlier Community trade mark has been             the earlier Community trade mark has at that date been
used in relation to part only of the goods or services for         registered for not less than five years. In the absence of
which it is registered it shall, for purposes of the               proof to this effect, the opposition shall be rejected. If the
examination of the opposition, be deemed to be registered          earlier Community trade mark has been used in relation
in respect only of that part. This provision shall apply           to part only of the goods or services for which it is
where the earlier trade mark is a trade mark of the kind           registered it shall, for purposes of the examination of the
described in subparagraph (b) or (c) of paragraph 2 of             opposition, be deemed to be registered in respect only of
Article 7.                                                         that part.
                                                                   2a.       Paragraph 2 shail apply mutatis mutandis to
                                                                   earlier national trade marks referred to in Article 7 (2) (a),
                                                                   with the proviso that use in the Member State in which
                                                                   the earlier national trade mark is protected shall be
                                                                   substituted for use in the Community.
3.     The Office shall, if it thinks fit, invite the parties       3.     The Office shall, if it thinks fit, invite the parties
to make a friendly settlement. The Office shall make                to make a friendly settlement. The Office shall make
proposals to them for this purpose if it considers that             proposals to them for this purpose if it considers that the
 ---pagebreak--- 31. 8. 84                            Official Journal of the European Communities                             No C 230/21
                     ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
conditions can be imposed on the prospective use of the         prospective use of the trade mark applied for, of the
trade mark applied for and of the earlier trade mark in         earlier trade mark or of the earlier right can be subjected
such manner that there will be no serious likelihood of         to conditions so that there will be no likelihood of
confusion on the part of the public.                            confusion on the part of the public.
4.     If examination of the opposition reveals that the                Unchanged.
trade mark is not eligible for registration in respect of
some or all of the goods or services for which the
Community trade mark application has been made, the
application shall be rejected in respect of those goods or
services. Otherwise the opposition shall be rejected.
5.     Where a final decision is taken to refuse the             5.     Where the application is refused completely, the
application the decision shall be published.                     decision shall be published upon becoming final.
                        Section 3                                                         Section 3
                      REGISTRATION                                                      REGISTRATION
                         Article 36                                                        Article 36
Where an application meets the requirements of this              Where an application meets the requirements of this
Regulation and the registration fee has been paid in due         Regulation and the registration fee has been paid within
time, the trade mark shall be registered as a Community          the period prescribed, the trade mark shall be registered
trade mark. If the fee is not paid within the period             as a Community trade mark. If the fee is not paid within
prescribed the application shall be deemed to have been          this period prescribed the application shall be deemed to
withdrawn.                                                       be withdrawn.
                          TITLE V                                                           TITLE V
                        RENEWAL                                                           RENEWAL
                         Article 37                                                        Article 37
 1.     Where it is desired to renew the registration of a        1.     Registration of the Community trade mark shall be
 Community trade mark an application shall be made. A            renewed at the request of the proprietor of the trade mark
 declaration of user shall be produced and fees shall be         or a licensee expressly authorized by the proprietor,
 paid.                                                           provided that the fees are paid.
                                                                  la.     The Office shall inform the proprietor of the
                                                                  Community trade mark and any third party who has a
                                                                  right in respect of the Community trade mark recorded in
                                                                 the Register of the expiry of the registration in good time
                                                                  before the said expiry.
 2.     The declaration of user shall specify the goods or        2.     Deleted.
 services in respect of which the Community trade mark
 has been used in manner required by Article 13 during the
 period of five years prior to expiry of the registration.
 3.     The application shall be submitted, the declaration       3.     The request shall be submitted and the fees paid
 of user produced and the fees paid not earlier than six          within the six months preceding the expiry of the
 months before expiry of the registration. Failing this, they     registration. Failing this, they may validly be submitted
 may validly be submitted, filed and paid within six              and paid within six months following the date of expiry of
 months following the date of expiry of the registration,         the registration but on payment of an additional fee.
 but on payment of an additional fee.
 ---pagebreak---  No C 230/22                           Official Journal of the European Communities                                   31. 8. 84
                       ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
 4.     Where the application is submitted, the declaration        4.     Where the request is submitted and the fees paid in
 of user produced and the fees paid in respect of part only        respect of part only of the goods or services for which the
 of the goods or services for which the Community trade            Community trade mark is registered, registration shall be
 mark is registered, registration shall be renewed only for        renewed only for that part of the goods or services.
 that part of the goods or services.
 5.     Renewal shall take effect from the date on which                  Unchanged.
the existing registration expires. The renewal shall be
registered.
                           TITLE VI                                                          TITLE VI
  SURRENDER, REVOCATION AND INVALIDITY                              SURRENDER, REVOCATION AND INVALIDITY
                          Section 1                                                         Section 1
                         SURRENDER                                                         SURRENDER
                          Article 38                                                        Article 38
1.      A Community trade mark may be surrendered in              1.      Unchanged.
respect of some or all of the goods or services for which it
is registered.
2.      Surrender shall be effected by the proprietor of the              Unchanged.
trade mark by means of writing delivered to the Office.
The surrender shall not have effect until it is recorded in
the Register.
3.      Surrender shall be registered only with the consent       3.      Surrender will be entered in the Register only with
of any third party who has a right in rem which is                the agreement of any third party who has a right under
recorded in the Register. If a licence is recorded in the         Articles 18,19 or 20 recorded in the Register. If a licence
Register, the surrender shall be recorded only if the             is recorded in the Register, surrender will be entered only
proprietor of the trade mark proves that he has previously        if the proprietor of the trade mark proves that he has
informed the licensee of his intention to surrender it.           informed the licensee of his intention to surrender; this
                                                                  entry will be made on expiry of the period prescribed.
                          Section 2                                                        Section 2
        GROUNDS FOR AND CONSEQUENCES OF                                   GROUNDS FOR AND CONSEQUENCES OF
                        REVOCATION                                                        REVOCATION
                          Article 39                                                        Article 39
                 [Grounds for revocation]                                           [Grounds for revocation]
1.      The rights of the proprietor of a Community trade         1.      The rights of the proprietor of a Community trade
mark shall be revoked:                                            mark shall be declared to be revoked on application to the
                                                                  Office or on the basis of a counterclaim in infringement
                                                                  proceedings:
     if the trade mark has not been used in manner                (a) if the trade mark, within an uninterrupted period of
     required by Article 13 during an unbroken period of               five years, has not been put to genuine use in the
     five years; but no person may claim that the                      Community in connection with the goods or services
     proprietor's rights in a Community trade mark                     in respect of which it is registered, unless there exist
     should be revoked where, during the interval between              legitimate reasons for non-use; however, no person
     expiry for the five year period and filing of the                 may claim that the proprietor's rights in a
     application for revocation, the trade mark has been               Community trade mark should be revoked where,
     used in manner required by Article 13 and this use                during the interval between expiry of the five year
     was made in good faith;                                           period and filing of the application or counter-claim
                                                                       use of the trade mark has been started or resumed in
                                                                       good faith;
 ---pagebreak--- 31. 8. 84                             Official Journal of the European Communities                             No C 230/23
                      ORIGINAL PROPOSAL                                                AMENDED PROPOSAL
(b) if, in consequence of acts of the proprietor, the trade       (b) if, in consequence of acts or inactivity of the
     mark has become the common name for a product or                  proprietor, the trade mark has become the common
     service in respect whereof it is registered;                      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 in respect of        (c) Unchanged.
     the goods or services for which it is registered, it is
     liable to mislead the public, particularly as to the
     nature, quality or geographical origin of those goods
     or services.
2.      Where the grounds for revocation of rights exist in       2.     Where the grounds for revocation of rights exist in
respect of part only of the goods or services for which the       respect of part only of the goods or services for which the
Community trade mark is registered, the rights of the             Community trade mark is registered, the rights of the
proprietor shall be revoked in respect only of that part of       proprietor shall be declared to be revoked in respect only
the goods or services.                                            of that part of the goods or services.
                          Article 40                                                       Article 40
                [Consequences of revocation]                                    [Consequences of revocation]
1.      Revocation shall be declared by a decision adopted        1.     Deleted.
in conformity with the terms of this Regulation.
2.      The Community trade mark shall, within the tenor          2.     The Community trade mark shall, as from the date
of the decision revoking it, be deemed not to have had the        of the decision revoking the rights of the proprietor, be
effects provided for in this Regulation from the time when        deemed no longer to have the effects provided for in this
any of the grounds for revocation existed.                        Regulation, to the extent that the rights of the proprietor
                                                                  have been revoked. At the request of one of the parties it
                                                                  may be provided in the decision that the decision has
                                                                  effect from an earlier date at which any of the grounds for
                                                                  revocation existed.
3.      Subject to the provisions contained in the laws of        3.      Unchanged.
the Member States relating to actions for compensation
for damage caused by negligence or by lack of good faith
on the part of the proprietor of the trade mark, or relating
to unjust enrichment, the retroactive effect of revocation
 shall not affect:
(a) any decision on infringement which has acquired the
      authority of a final decision and has been executed
      before the decision revoking the rights of the
      proprietor was adopted;
 (b) any contract concluded before the decision revoking
      the rights of the proprietor was adopted, in so far as
      the contract has been performed before the adoption
      of that decision, but restitution of sums paid under
      the contract may be claimed on grounds of equity to
      the extent justified by the circumstances.
                          Section 3                                                        Section 3
         GROUNDS FOR AND CONSEQUENCES OF                                  GROUNDS FOR AND CONSEQUENCES OF
                         INVALIDITY                                                       INVALIDITY
                          Article 41                                                        Article 41
              [Absolute grounds of invalidity]                                 [Absolute grounds of invalidity]
 1.     A Community trade mark which is registered in             1.     A Community trade mark which is registered in
breach of the provisions of Article 6 shall be invalid.           breach of the provisions of Article 6 shall be declared
                                                                  invalid on application to the Office or on the basis of a
                                                                  counterclaim in infringement proceedings.
 ---pagebreak---   No C 230/24                            Official Journal of the     »ean Communities                                3 1 . 8, 84
                        ORIGINAL PROPOSAL                                                AMENDED PROPOSAL
  2.      Where subparagraph (a) of paragraph 1 of Article 6      2.      Where the Community trade mark is registered in
  has been contravened, the Community trade mark shall            breach of the provision of Article 6 (1) (a), it may
  nevertheless not be declared invalid if it has become           nevertheless not be declared invalid if, in consequence of
  distinctive after registration.                                 the use which has been made of it, it has become
                                                                  distinctive after registration, in relation to the goods or
                                                                  services for which it is registered.
 3.      Where the ground of invalidity exists in respect of      3.     Where the ground of invalidity exists in respect of
 part only of the goods or services for which the                 part only of the goods or services for which the
 Community trade mark is registered, the trade mark shall         Community trade mark is registered, the trade mark shall
 be invalid as regards only that part of the goods or             be declared invalid as regards only that part of the goods
 services.                                                        or services.
                           Article 42                                                       Article 42
                [Relative grounds of invalidity]                                 [Relative grounds of invalidity]
 1.      A Community trade mark shall be invalid:                 1.     A Community trade mark shall be declared invalid
                                                                 on application to the Office or on the basis of a
                                                                 counterclaim in infringement proceedings:
 (a) where a trade mark of the kind described in Article 7       (a) where an earlier right referred to in Article 7 exists in
      exists in opposition to it and the conditions set out in         opposition to it and the conditions set out in
      paragraph 1 or 3 of that Article obtain;                         paragraph 1 of the Article obtain, except where the
                                                                       earlier right subsists only in a particular locality;
(b) where some other prior right exists in opposition to it      (b) where the conditions set out in Article 7 (3)
       and there is a serious likelihood of confusion on the           obtain.
      part of the public between the trade mark and that
       right; but this provision shall not apply if the right
       subsists only in a particular locality. The expression
      'some other prior right' means any sign used in the
      course of trade before filing of the Community trade
      mark application which, under the law of the
      Member State which governs the sign, entitles the
      proprietor to prohibit the use of any later trade
      mark.
2.       A Community trade mark shall also be invalid if it      2.      Deleted.
contains:
(a) a work protected by copyright or by an industrial
      design or model;
(b) a portrait;
(c) a surname, where use of the trade mark in relation to
      the goods or services for which it is registered is liable
      to cause serious detriment to the honour, reputation
      or credit of the person whose surname it is.
3.       A Community trade mark shall not be declared            3.      A Community trade mark may not be declared
invalid where the proprietor of any such right as is             invalid where the proprietor of any such right as is
mentioned in paragraph 1 or 2 has consented to                   mentioned in paragraph 1 has consented expressly to
registration of that trade mark.                                 registration of the Community trade mark.
4.       Where the proprietor of any such right as is            4.      Where the proprietor of any such right as is
mentioned in paragraph 1 or 2 applies for a declaration          mentioned in paragraph 1 has previously applied for a
that a Community trade mark is invalid, he shall not enter       declaration that a Community trade mark is invalid or
a new application for that purpose on the basis of another       m a d e a counterclaim in infringement proceedings, he may
 ---pagebreak--- 31. 8. 84                               Official Journal of the European Communities                              No C 230/25
                      ORIGINAL PROPOSAL                                                  AMENDED PROPOSAL
such right which he could have averred in support of the            not enter a new application or counterclaim for that
first application.                                                  purpose on the basis of another such right which he could
                                                                    have invoked in support of his first request.
5.     Paragraph 3 of Article 41 shall apply.                       5.     Article 41 (3) shall apply mutatis    mutandis.
                          Article 43                                                         Article 43
                 [Consequences of invalidity]                                       [Consequences of invalidity]
1.     Where a decision is adopted declaring a                      1.     The Community trade mark shall be deemed not to
Community trade mark invalid, the trade mark shall,                 have had, as from the outset, the effects specified in this
within the tenor of the decision declaring it invalid, be           Regulation, to the extent that the trade mark has been
deemed never to have had the effects provided for in this           declared invalid.
Regulation from the time when the trade mark came into
existence.
2.     Paragraph 1 and 3 of Article 40 shall apply to               2.     Article 40 (3) shall apply mutatis mutandis to
invalidity of Community trade marks.                                invalidity of Community trade marks.
                          Article 44                                                         Article 44
       [Limitation in consequence of acquiescence]                         [Limitation in consequence of acquiescence]
 1.    Where the proprietor of any such right as is                 1.     Where the proprietor of a Community trade mark
 mentioned in paragraph 1 or 2 of Article 42 has                    has acquiesced in the use of a later Community trade
 acquiesced in the use of a Community trade mark for a              mark in the Community for a period of three successive
 period of three successive years, he shall not be entitled to      years, being aware of such use, he shall not be entitled
 apply for a declaration that the trade mark is invalid on          either to apply for a declaration that the later trade mark
 the ground that that right, or some other right of his,            is invalid or to oppose the use of the later trade mark in
 exists, but this provision shall not apply if the Community        respect of the goods or services for which the later trade
 trade mark was applied for in bad faith.                           mark has been used, unless the later Community trade
                                                                    mark was applied for in bad faith.
                                                                    la.     Where the proprietor of another earlier right
                                                                    mentioned in Article 7 (2) (a) to (d) has acquiesced in the
                                                                    use of a later Community trade mark in the Member State
                                                                    in which the earlier right is protected for a period of three
                                                                    successive years, being aware of such use, he shall not be
                                                                    entitled to apply for a declaration that the Community
                                                                    trade mark is invalid in respect of the goods or services for
                                                                    which the Community trade mark has been used, unless
                                                                    the Community trade mark was applied for in bad
                                                                    faith.
 2.     Paragraph 1 shall not affect the right of the                2.     Unchanged.
 proprietor of a well-known trade mark, as defined in
 paragraph 2 of Article 7, to apply for a declaration that a
 Community trade mark is invalid, provided he makes the
 application within the period of five years following
 registration of the Community trade mark.
 3.     The proprietor of a Community trade mark shall               3.     The proprietor of a later Community trade mark
 not be entitled to oppose use of the right referred to in           shall not be entitled to oppose use of the earlier right
 paragraph 1 even though the proprietor of that right is no          referred to in paragraph 1 or l a even though that right
 longer entitled to apply for a declaration that the                 may no longer be invoked against the later Community
 Community trade mark is invalid.                                    trade mark.
 ---pagebreak--- No C 230/26                             Official Journal of the European Communities                                   31. 8. 84
                       ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
                          Article 45                                                         Article 45
       [Prior rights subsisting in particular localities]                 [Prior rights subsisting in particular localities]
1.      The proprietor of a prior right subsisting in a             1.     The proprietor of an earlier right subsisting only in
particular locality may oppose use of the Community                a particular locality may oppose use of the Community
trade mark in the territory where his right is valid.              trade mark in the territory where his right is protected.
2.      Paragraph 1 shall cease to apply if the proprietor of      2.      Paragraph 1 shall cease to apply if the proprietor of
the prior right has acquiesced in the use of the Community         the earlier right has acquiesced in the use of the
trade mark for a period of three successive years; but this        Community trade mark in the territory where his right is
provision shall not apply if the Community trade mark              protected for a period of three successive years, being
was applied for in bad faith.                                      aware of such use, unless the Community trade mark was
                                                                   applied for in bad faith.
3.      The proprietor of the Community trade mark shall           3.      The proprietor of the Community trade mark shall
not be entitled to oppose use of the right referred to in          not be entitled to oppose use of the right referred to in
paragraph 1 even if that provision has ceased to apply.            paragraph 1 even though that right may no longer be
                                                                   invoked against the Community trade mark.
                          Section 4                                                         Section 4
    PROCEEDINGS IN THE OFFICE IN RELATION TO                           PROCEEDINGS IN THE OFFICE IN RELATION TO
               REVOCATION OR INVALIDITY                                          REVOCATION OR INVALIDITY
                          Article 46                                                        Article 46
   [Application for revocation or for a declaration of                 [Application for revocation or for a declaration of
                          invalidity]                                                       invalidity]
1.      An application for revocation of the rights of the         1.      An application for revocation of the rights of the
proprietor of a Community trade mark or for a                      proprietor of a Community trade mark or for a
declaration that the trade mark is invalid may be                  declaration that the trade mark is invalid may be
submitted to the Office:                                           submitted to the Office.
(a) where Articles 39 and 41 apply, by any natural or              (a) Unchanged;
     legal person and any group or body which has the
     capacity to be a party to proceedings in court,
     whether as plaintiff or defendant, for the purpose of
     representing the interests of manufacturers,
     producers, suppliers of services, traders or
     consumers;
(b) where paragraph 1 of Article 42 applies, by the                (b) where Article 42 (1) applies, by the persons referred
     proprietor of the trade mark or other prior right;                  to in Article 34 (1).
(c) where paragraph 2 of Article 42 applies, by the owner          (c) Deleted.
     of the copyright, the proprietor of the design or
     model, the owner of the relevant surname, the person
     who is the subject of the portrait, or the persons who
     are entitled under the laws of the Member States to
     exercise the rights in question.
2.      The application shall be submitted in writing and          2.      Unchanged.
shall specify the grounds on which it is made. Before the
fee has been paid the application shall be treated as not
having been submitted.
3.      Paragraph 3 of Article 34 shall apply.                     3.      Unchanged.
4.      An application for revocation or for a declaration         4.      An application for revocation or for a declaration
of invalidity shall not lie if an application relating to the      of invalidity shall not lie if an application relating to the
 ---pagebreak--- 31. 8. 84                               Official Journal of the European Communities                              No C 230/27
                      ORIGINAL PROPOSAL                                                   AMENDED PROPOSAL
same subject-matter and cause of action, and involving             same subject-matter and cause of action, and involving
the same parties, has been adjudicated on by a court in a          the same parties, has been adjudicated on by a Court in a
Member State.                                                      Member State and has acquired the authority of a final
                                                                   decision.
                          Article 47                                                          Article 47
             [Examination of the application]                                    [Examination of the application]
1.     The Office may stay the proceedings of its own               1.     Unchanged.
motion or at the request of any of the parties if, under
paragraph 1 of Article 78, a counterclaim for revocation
of the rights of the proprietor of the Community trade
mark or for a declaration that the Community trade mark
is invalid has been filed with a court in a Member
State.
2.     When the Office examines the application for                2.      In the examination of the application for revocation
revocation of rights or for a declaration of invalidity, it        of rights or for a declaration of invalidity, the Office shall
shall as often as necessary invite the parties to file             invite the parties, as often as necessary, to file
observations on communications from third parties or               observations, within a period to be fixed by the Office, on
issued by itself.                                                  communications from another party or issued by itself.
3.     The Office may of its own motion contend that the           3.      Unchanged.
Community trade mark, having been registered in breach
of Article 3, Article 4 or subparagraphs (b) and (c) of
paragraph 2 of Article 6, is invalid.
4.     If the proprietor of the Community trade mark so            4.      If the proprietor of the Community trade mark so
requests or the Office so requires, the proprietor of an           requests or the Office so requires, the proprietor of an
earlier Community trade mark, being a party to the                 earlier Community trade mark, being a party to the
invalidity proceedings, shall furnish proof that that trade        invalidity proceedings, shall furnish proof that, during
mark has been used in manner required by Article 13                the period of five years preceding the date of the
during the period of five years preceding the date of the          application for a declaration of invalidity, the earlier
application for a declaration of invalidity, provided that         Community trade mark has been put to genuine use in the
at that date the earlier Community trade mark has been             Community in connection with the goods or services in
registered for not less than five years. If, at the date on        respect of which it is registered, or that there exist
which the Community trade mark application was                     legitimate reasons for non-use provided the earlier
published, the earlier Community trade mark has been               Community trade mark has at that date been registered
registered for not less than five years, the proprietor of the     for not less than five years. If, at the date on which the
earlier Community trade mark shall furnish proof that, in          Community trade mark application was published, the
addition, the conditions contained in paragraph 2 of               earlier Community trade mark has been registered for not
Article 35 were satisfied at that date. In the absence of          less than five years, the proprietor of the earlier
such proof the application for a declaration of invalidity         Community trade mark shall furnish proof that, in
shall be rejected. Where the earlier Community trade               addition, the conditions contained in Article 35 (2) were
mark has been used in relation to part only of the goods or         satisfied at that date. In the absence of proof to this effect
services for which it is registered it shall, for the purposes     the application for a declaration of invalidity shall be
                                                                   rejected. If the earlier Community trade mark has been
of examining the application for a declaration of
                                                                   used in relation to part only of the goods or services for
invalidity, be deemed to be registered in respect only of
                                                                   which it is registered it shall, for the purposes of the
that part of the goods or services. This provision shall
                                                                    examination of the application for a declaration of
apply where the earlier Community trade mark is a trade
                                                                    invalidity, be deemed to be registered in respect only of
mark of the kind described in subparagraph (b) or (c) of
                                                                   that part of the goods or services.
paragraph 2 of Article 7.
                                                                   4a.       Paragraph 4 shall apply mutatis mutandis to
                                                                   earlier national trade marks referred to in Article 7 (2) (a),
                                                                   with the proviso that use in the Member State in which the
                                                                   earlier national trade mark is protected shall be
                                                                    substituted for use in the Community.
5.     In the course of the invalidity proceedings the              5.      In the course of the invalidity proceedings the
Office shall, if it thinks fit, invite the parties to make a        Office shall, if it thinks fit, invite the parties to make a
friendly settlement. The Office shall make proposals to             friendly settlement. The Office shall make proposals to
them for this purpose if it considers that conditions can be        them for this purpose if it considers that the prospective
 ---pagebreak--- No C 230/28                           Official Journal of the European Communities                                   3 1 . 8. 84
                      ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
imposed on the prospective use of the Community trade             use of the Community trade mark, of the earlier trade
mark, of the earlier trade mark or of the prior right in such     mark or of the earlier right can be subjected to conditions
manner that there will be no serious likelihood of                so that there will be no likelihood of confusion on the part
confusion on the part of the public.                              of the public.
                                                                 5a.      If the examination of the application for
                                                                 revocation of rights or for a declaration of invalidity
                                                                 reveals that the trade mark should not have been
                                                                 registered in respect of some or all of the goods or services
                                                                 for which it is registered, the rights of the proprietor of the
                                                                 Community trade mark shall be revoked or it shall be
                                                                 declared invalid in respect of those goods or services.
                                                                  Otherwise the application for revocation of rights or for a
                                                                 declaration of invalidity shall be rejected.
6.     Where a final decision is taken revoking the rights       6.      Unchanged.
of the proprietor of the Community trade mark or
declaring it invalid, it shall be removed from the
register.
                          TITLE VII                                                         TITLE VII
                          APPEALS                                                           APPEALS
                          Article 48                                                        Article 48
         [Decisions from which an appeal will lie]                        [Decisions from which an appeal will lie]
1.      An appeal shall lie from decisions of the Office. It      1.     Unchanged.
shall have suspensive effect.
2.      An appeal against a decision which does not               2.     A decision which does not terminate proceedings as
terminate proceedings as regards one of the parties may           regards one of the parties can only be appealed together
only be made in conjunction with an appeal against the            with the final decision, unless the decision allows separate
final decision, unless the latter contemplates separate           appeal.
appeal.
                          Article 49                                                        Article 49
      [Persons entitled to appeal and to be parties to                 [Persons entitled to appeal and to be parties to
                   proceedings on appeal]                                            proceedings on appeal]
Any party to proceedings who is adversely affected by a           Unchanged.
 decision may appeal. The other parties to those
proceedings shall automatically be parties to the appeal
proceedings.
                          Article 50                                                        Article 50
              [Time limit and form of appeal]                                   [Time limit and form of appeal]
 Notice of appeal shall be filed in writing at the Office         Unchanged.
 within two months after notification of the decision from
 which the appeal is made. Until such time as the fee for
 appeal has been paid the notice shall be treated as not
 having been filed. Within four months after notification
 of the decision a written statement setting out the grounds
 of appeal shall be filed.
                          Article 51                                                         Article 51
                   [Interlocutory revision]                                          [Interlocutory revision]
 1.     If the department whose decision is contested              Unchanged.
 considers that the appeal properly lies and is well
 ---pagebreak--- 31. 8. 84                               Official Journal of the European Communities                             No C 230/29
                      ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
founded, it shall rectify its decision. This shall not apply
where the appellant is in the proceedings opposed by
another party.
2.     If the appeal is not allowed within one month after
receipt of the statement of grounds, the appeal shall
forthwith be remitted to the Board of Appeal without
comment on the merits.
                          Article 52                                                        Article 52
                  [Examination of appeals]                                           [Examination of appeals]
 If the appeal properly lies, the Board of Appeal shall as          1.     If the appeal is admissible, the Board of Appeal
often as necessary invite the parties to file observations on       shall examine whether the appeal is allowable.
communications from another party or issued by itself.
                                                                    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 another party or
                                                                    issued by itself.
                           Article 53                                                        Article 53
                     [Decision on appeal]                                              [Decision on appeal]
 In deciding the appeal the Board of Appeal may exercise            1.     Following the examination as to the allowability of
 any power which lies within the competence of the                  the appeal, the Board of Appeal shall decide on the
 department whose decision is the subject of the appeal, or         appeal. The Board of Appeal may either exercise any
 it may remit the case to that department for further               power within the competence of the department which
 action. In the latter case the department shall, in so far as      was responsible for the decision appealed or remit the
the facts are the same, be bound by the decision of the             case to that department for further prosecution.
 Board of Appeal and by the grounds on which it is
 based.                                                             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.
                           Article 54                                                        Article 54
               [Further appeal by the parties]                                    [Further appeal by the parties]
 1.     A further appeal to the Court of Justice of the             1.     A further appeal to the Court of Justice of the
 European Communities shall lie from decisions of the               European Communities shall lie from decisions of the
Boards of Appeal. Such further appeals shall have                   Boards of Appeal on appeals. Such further appeal shall
 suspensive effect.                                                 have suspensive effect.
 2.     The further appeal may be lodged on grounds of              2.      Unchanged.
 want of jurisdiction, infringement of an essential
 procedural requirement, infringement of the Treaty, of
 this Regulation or of any rule of law relating to their
 application, in so far as that rule of law is not a provision
 of national law, or misuse of power. The Court of Justice
 shall not question the facts as found by and recorded in
 the decision of the Board of Appeal.
 ---pagebreak---   No C 230/30                           Official Journal of the European Communities                               31. 8. 84
                       ORIGINAL PROPOSAL                                              AMENDED PROPOSAL
  3.     The further appeal may be made by any party to the        3.     Unchanged.
  proceedings before the Board of Appeal who is adversely
  affected by its decision.
  4.     The further appeal shall be lodged with the Court of      4.     Unchanged.
  Justice within two months after notification of the
  decision of the Board of Appeal.
  5.     If the Court of Justice remits the case for further       5.     Unchanged.
  action to the Board of Appeal, the Board shall, in so far as
 the facts are the same, be bound by the decision of the
 Court of Justice and by the grounds on which it is
 based.
                          Article 55                                                      Article 55
          [Further appeal in the interest of the law]                     [Further appeal in the interest of the law]
 1.     The Commission may, in the interest of the law,            Unchanged.
 lodge a further appeal to the Court of Justice against a
 decision of the Board of Appeal. The further appeal may
 be lodged on grounds of want of jurisdiction,
 infringement of an essential procedural requirement,
infringement of the Treaty, of this Regulation or of any
rule of law relating to their application, in so far as that
rule of law is not a provision of national law, or misuse of
power. The provisions contained in this paragraph shall
apply to final decisions only.
2.      Where the decision is reversed, the parties shall not
be entitled to plead this fact.
3.      The Registrar of the Court of Justice shall notify the
Member States and the Council that the further appeal
has been lodged, and they shall be entitled to file
memoranda or observations in writing with the Court
within two months after receipt of notification.
4.      No costs or expenses shall be charged or
reimbursed in connection with such proceedings as are
provided for in this Article.
                          TITLE VIII                                                     TITLE VIII
                       PROCEDURE                                                       PROCEDURE
                         Section 1                                                      Section 1
                   GENERAL PROVISION                                               GENERAL PROVISION
                          Article 56                                                     Article 56
   [Statement of grounds on which decisions are based]              [Statement of grounds on which decisions are based]
Decisions of the Office shall state the grounds on which          Unchanged.
they are based. They shall be based only on grounds or on
evidence on which the parties involved have had the
opportunity of presenting their observations.
 ---pagebreak--- 31. 8. 84                              Official Journal of the European Communities                             No C 230/31
                      ORIGINAL PROPOSAL                                               AMENDED PROPOSAL
                          Article. 57                                                     Article 57
[Examination of the facts by the Office of its own                [Examination of the facts by the Office of its own
                           motion]                                                          motion]
In proceedings before it the Office shall examine the facts       1.     In proceedings before it the Office shall examine the
of its own motion. It may disregard facts or items of             facts of its own motion. However, in proceedings relating
evidence which have not been submitted in due time by             to relative grounds for refusal of registration, the Office
the parties involved.                                             shall be restricted in this examination to the facts,
                                                                  evidence and arguments provided by the parties and the
                                                                  relief sought.
                                                                  2.     The Office may disregard facts or evidence which
                                                                  are not submitted in due time by the parties
                                                                  concerned.
                          Article 58                                                      Article 58
                     [Oral proceedings]                                               [Oral proceedings]
1.     If the Office considers that oral proceedings would        Unchanged.
be useful they shall be held either on motion of the Office
itself or at the request of any of the parties to the
proceedings.
2.     Oral proceedings before the Examining Division,
Opposition Division or Administration Division shall not
be public.
3.     Oral proceedings, incl uding delivery of the decision
shall, as regards the Cancellation Division and the Board
of Appeal, be public, in so far as the department before
which the proceedings are taking place does not decide
otherwise in circumstances where serious and
unwarranted disadvantages could arise from admitting
the public, particularly for any of the parties to the
proceedings. In derogation from paragraph 2, this
present paragraph shall apply to oral proceedings before
the Opposition Division in cases where Article 91
 applies.
                          Article 59                                                       Article 59
                    [Taking of evidence]                                             [Taking of evidence]
 1.    In any proceedings before the Office, the means of                Unchanged.
giving or obtaining evidence shall include the
following:
(a) hearing the parties;
(b) requests for information;
 (c) production of documents;
 (d) hearing the witnesses;
 (e) opinions by experts;
 (f) inspection;
 (g) sworn statements in writing.
 2.    The relevant department may commission one of its           2.     Unchanged,
 members to examine the evidence adduced.
 ---pagebreak--- No C 230/32                            Official Journal of    European Communities                                 31. 8. 84
                      ORIGINAL PROPOSAL                                               AMENDED PROPOSAL
 3.    If the Office considers it necessary that a party,         3.    Unchanged.
 witness or expert give evidence orally, it shall either:
 (a) issue a summons requiring the relevant person to
     appear before it, or
(b) request the competent judicial authority in the
     country of residence of the relevant person to take the
     evidence, as provided in paragraph 3 of Article 70.
4.     A party, witness or expert who is summoned before         4.     Unchanged.
the Office may request it to allow his evidence to be heard
by the competent judicial authority in his country of
residence. On receipt of such request, or if there is no
response to the summons, the Office may, in accordance
with the provisions of paragraph 3 of Article 70, request
the competent judicial authority to take the evidence of
that person.
5.     If a party, witness or expert gives evidence before       5.    If a party, witness or expert gives evidence before
the Office, the Office may, if it considers it advisable that    the Office, the latter may, if it considers it advisable for
the evidence be given in solemn form, request the                the evidence to be given on oath or in an equally binding
competent authority in the country of residence of the           form, request, in accordance with Article 70 (3), the
relevant person to hear his evidence under the requisite         competent court in the country of residence of the person
conditions.                                                      concerned to re-examine his evidence under such
                                                                 conditions.
6.     When the Office requests a competent judicial             6.    When the Office requests a competent court to take
authority to take the evidence, it may request it to take the    evidence, it may request the court, in accordance with
evidence in solemn form and to permit a member of the            Article 70 (3), to take the evidence on oath or in an
relevant department to attend the hearing and question           equally binding form and to permit a member of the
the party, witness or expert either through the                  department concerned to attend the hearing and question
intermediary of that judicial authority or directly.             the party, witness or expert either through the
                                                                 intermediary of the court or directly.
                                                                 7.    The parties shall be informed of the hearing of a
                                                                 witness. They shall have the right to be present and to put
                                                                 questions to the witness.
                         Article 60                                                      Article 60
                          [Service]                                                       [Service]
The Office shall effect service of all decisions and             Unchanged.
summonses, and of notices which cause time limits to run
or which are required to be served either in pursuance of
other provisions of this Regulation or by order of the
President of the Office.
                         Article 61                                                      Article 61
                  [Restitutio in integrum]                                        [Restitutio in integrum]
1.     Where, in spite of having taken all due care in the       1.     Unchanged.
particular circumstances, the applicant for or proprietor
of a Community trade mark or any other party to
proceedings before the Office has been unable to observe
a time limit vis-a-vis the Office, his rights shall, upon
application, be restored if his failure to respect the time
limit has resulted directly, by virtue of the provisions of
this Regulation, in the loss of any right or means or
redress.
 ---pagebreak--- 31. 8. 84                              Official Journal of the European Communities                              No C 230/33
                     ORIGINAL PROPOSAL                                                  AMENDED PROPOSAL
2.     Applications shall be filed in writing within two           2.     Unchanged.
months after the cause of noncompliance with the time
limit has ceased to operate. The act omitted shall be
completed within this period. Application may be made
only within the period of one year following the expiry of
the time limit which has not been observed. Where the
formalities for renewal have not been complied with, the
period specified in paragraph 3 of Article 37 shall be
deducted from the one-year period.
3.      An application shall state the grounds on which it is             Unchanged.
based and the facts on which it relies. It shall not be
regarded as duly filed until the fee for restoration of rights
has been paid.
4.      The decision on the application shall be determined               Unchanged.
by the department which is competent in relation to the
omitted act.
5.      The provisions of this Article shall not apply to the      5.     The provisions of this Article shall not be applicable
time limits referred to in paragraph 2 of this Article nor to      to the time limits referred to in paragraph 2 of this Article,
the time limit specified in paragraph 1 of Article 26.             Articles 26 (1) and 34(1).
6.      The applicant for or proprietor of a Community             6.     Where the applicant for or proprietor of a
trade mark shall not oppose the use of a sign in good faith        Community trade mark has his rights re-established, he
by a third party during the period between the time when           may not invoke his rights vis-a-vis a third party in respect
the rights in the application or in the trade mark are lost        of goods or services which that third party has put on the
and the restoration of those rights.                               market in good faith under that trade mark in the course
                                                                   of the period between the loss of rights in the application
                                                                   or in the trade mark and publication of the mention of
                                                                   re-establishment of those rights.
                          Article 62                                                         Article 62
              [Reference to general principles]                                  [Reference to general principles]
In the absence of procedural provisions in this                    In the absence of procedural provisions in this
Regulation, the Office shall take into account the                 Regulation, the implementing regulation, the fees
principles of procedural law which are generally                   regulations or the rules of procedure of the Boards of
recognized in the Member States.                                   Appeal, the Office shall take into account the principles of
                                                                   procedural law generally recognized in the Member
                                                                   States.
                          Article 63                                                         Article 63
           [Termination of financial obligations]                            [Termination of financial obligations]
 1.     The Office's right to require payment of fees shall        Unchanged.
 be extinguished after four years from the end of the
 calendar year in which the fees become due for
 payment.
 2.     Rights against the Office for the refunding of fees or
 of sums overcharged by the Office shall be extinguished
 after four years from the end of the calendar year in which
 the rights arose.
 3.     A request for payment of a fee shall have effect to
 interrupt the period specified in paragraph 1, and a
 written claim for refund, stating the grounds on which it
 is made, shall have effect to interrupt the period specified
 in paragraph 2. After interruption the period shall begin
 ---pagebreak---  No C 230/34                           Official Journal of the European Communities                                  31. 8. 84
                     ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
to run again immediately and shall terminate at the latest
six years after the end of the calendar year in which it
originally commenced, unless in the meantime judicial
proceedings to enforce the right have been instituted; in
this case the period shall end not earlier than one year
after the judgment has acquired the authority of a final
decision.
                        Section 2                                                          Section 2
                           COSTS                                                              COSTS
                        Article 64                                                         Article 64
                           [Costs]                                                            [Costs]
1.     Each party to opposition proceedings or to                 1.     Each party to opposition proceedings or to
proceedings for revocation or for a declaration of                proceedings for revocation or to proceedings for a
invalidity shall pay the costs incurred by him unless the         declaration of invalidity or to appeal proceedings shall
Opposition Division or Cancellation Division decides              meet the costs he has incurred unless a decision of an
that it would be equitable that the costs of oral                 Opposition Division or Cancellation Division or Board of
proceedings or of certain stages in the examination be            Appeal, for reasons of equity, orders a different
borne in some other manner. A decision concerning                 apportionment of essential costs, including travel and
division of costs may, if applied for, be adopted where a         subsistence and the remuneration of an agent, adviser or
Community trade mark application, an opposition, an               advocate. A decision on the apportionment of costs may
application for revocation of rights or an application for a      also be taken on request when a Community trade mark
declaration of invalidity is withdrawn, or where                  application, an opposition, an application for revocation
registration of a Community trade mark is not renewed or          of rights or an application for a declaration of invalidity is
where the proprietor of a Community trade mark                    withdrawn, or when registration of a Community trade
surrenders it.                                                    mark is not renewed or where the proprietor of a
                                                                  Community trade mark surrenders it.
2.     Paragraph 1 shall also apply to the costs incurred by      2.     Deleted.
each of the parties to appeal proceedings. A Board of
Appeal decision on division of costs may cover all
essential items including travel and subsistence and the
remuneration of an agent, adviser or advocate.
3.     The Registrar of the Opposition Division or                       Unchanged.
Cancellation Division shall, upon application, determine
the amount of costs to be paid where a decision is taken to
divide them. The amount so determined may upon
application be amended if the Opposition Division or
Cancellation Division so decides.
                         Article 65                                                         Article 65
[Enforcement of decisions which determine the amount              [Enforcement of decisions which determine the amount
                          of costs]                                                          of costs]
1.     Final decisions of the Office which determine the          Unchanged.
amount of costs shall be enforceable.
2.     Enforcement shall be governed by the rules of civil
procedure applicable in the State in which it takes place.
Subject only to verification that the relevant document is
authentic, the enforcement clause or endorsement shall be
appended by the national authority appointed for that
 ---pagebreak---  31. 8. 84                              Official Journal of the European Communities                           No C 230/35
                      ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
purpose by the government of each Member State; the
governments shall inform the Office and the Court of
Justice of the identity of each such national authority.
3.     When, upon application by the person concerned,
these formalities have been completed, he shall be entitled
to proceed to enforcement by bringing the matter before
the competent body designated by national law.
4.     Enforcement shall not be suspended except by
decision of the Court of Justice. Control as to the
regulatory of enforcement measures shall, however,
reside with the national courts.
                         Section 3                                                         Section 3
INFORMATION OF THE PUBLIC AND OF THE OFFICIAL                      INFORMATION OF THE PUBLIC AND OF THE OFFICIAL
        AUTHORITIES OF THE MEMBER STATES                                   AUTHORITIES OF THE MEMBER STATES
                          Article 66                                                        Article 66
         [Register of Community Trade Marks]                                [Register of Community Trade Marks]
The Office shall keep a register which shall be known as           The Office shall keep a register to be known as the
the Register of Community Trade Marks, wherein shall               Register of Community Trade Marks, which shall
be recorded the particulars whose registration is required         contain those particulars the registration of which is
by this Regulation. The Register shall be open to public           provided for by this Regulation or by the implementing
inspection.                                                        regulation. The Register shall be open to public
                                                                   inspection.
                          Article 67                                                        Article 67
                     [Inspection of files]                                             [Inspection of files]
1.     The files relating to Community trade mark                         Unchanged.
applications which are awaiting publication shall not be
made available for inspection without the consent of the
applicant.
2.     Any person who proves that the applicant for a              2.     Unchanged.
Community trade mark has stated, directly or indirectly,
that after the trade mark has been registered he will
invoke it against that person may, without the applicant's
consent, inspect the file before the application is
published.
 3.    After publication of a Community trade mark                 3.     Subsequent to the publication of the Community
 application the files relating to the application and to the      trade mark application, the files relating to such
 trade mark itself may be inspected on request. Certain             application and the resulting trade mark may be inspected
 documents in the file may, however, be withheld from               on request. Certain documents in the file may, however,
 inspection.                                                        be withheld from inspection in accordance with the
                                                                    provisions of the implementing regulation.
                          Article 68                                                        Article 68
           [Community Trade Marks Bulletin]                                   [Community Trade Marks Bulletin]
 The Office shall publish periodically a Community Trade            The Office shall periodically publish:
 Marks Bulletin containing entries made in the Register of
 ---pagebreak--- No C 230/36                            Official Journal of   European Communities                                 31. 8. 84
                      ORIGINAL PROPOSAL                                              AMENDED PROPOSAL
Community Trade Marks and all other particulars of              (a) a Community Trade Marks Bulletin containing
which publication is required under this Regulation.                entries made in the Register of Community Trade
                                                                    Marks as well as other particulars the publication of
                                                                    which is prescribed by this Regulation;
                                                                (b) a Bulletin of the Community Trade Marks Office
                                                                    containing notices and information of a general
                                                                    character issued by the President of the Office, as well
                                                                    as any other information relevant to this Regulation
                                                                    or its implementation.
                         Article 69                                                      Article 69
       [Classification of Community trade marks]                       [Classification of Community trade marks]
Goods and services for which Community trade marks              Unchanged.
are applied for shall be classified in conformity with the
Office's system of classification.
                         Article 70                                                      Article 70
          [Administrative and legal cooperation]                         [Administrative and legal cooperation]
1.     Unless this Regulation otherwise provides, the           1.    Unchanged.
Office and the courts or authorities of the Member States
shall on request give assistance to each other by supplying
information or sending files for inspection. Where the
Office send files for inspection to courts, Public
Prosecutors' Offices or central industrial property offices,
the restrictions laid down in Article 67 shall not apply.
2.     Information received in pursuance of paragraph 1         2.    Unchanged.
shall be used only for the purpose for which it was
requested. The Office and the courts or authorities of the
Member States, and the officials and other employees
thereof, shall not disclose information received by them in
pursuance of paragraph 1 if that information is of a
confidential nature.
3.     Upon receipt of letters rogatory from the Office, the    3.    Unchanged.
courts or other competent authorities of the Member
States shall undertake on its behalf any inquiries or other
judicial measures to the extent that they have power to
do so.
                                                                4.    Each Member State shall designate a central
                                                                authority which will undertake to receive letters rogatory
                                                                issued by the Office and to transmit them to the authority
                                                                competent to execute them.
                         Article 71                                                      Article 71
                 [Exchange of publication]                                       [Exchange of publication]
The Office and the central industrial property offices of       1.    Unchanged.
the Member States shall on request dispatch to each other
for their own use, free of charge, one or more copies of
their respective publications.
 ---pagebreak--- 31. 8. 84                             Official Journal of the European Communities                          No C 230/37
                      ORIGINAL PROPOSAL                                              AMENDED PROPOSAL
                                                                  2.    The Office may conclude agreements relating to the
                                                                  exchange or supply of publications.
                         Section 4                                                       Section 4
                    REPRESENTATION                                                  REPRESENTATION
                          Article 72                                                      Article 72
     [General principles applicable to representation]                [General principles applicable to representation]
 1.     No person shall be compelled to be represented            Unchanged.
before the Office by a professional representative.
2.      However, any natural or legal person whose place
of habitual residence or principal place of business is not
 in the Community shall be represented before the Office
 by a professional representative.
 3.     Natural or legal persons whose place of habitual
 residence or principal place of business is in the
 Community may act vis-ci-vis the Office through one of
 their employees; due authority shall be conferred for this
 purpose on such employee. An employee of a legal person
 to which this paragraph applies may, in derogation from
 paragraph 2 in appropriate cases, also represent other
 legal persons which are economically associated with that
 legal person.
                          Article 73                                                      Article 73
                [Professional representatives]                                  [Professional representatives]
  1.    Professional representation of natural or legal            Unchanged.
 persons before the Office may be undertaken by any
  advocate who is authorized to practice in a Member State
  and whose place of business is in the Community, to the
  extent that he can act in that State as a representative
  in trade mark matters; or by those professional
  representatives whose names appear on the list
  maintained for this purpose by the Office.
  2.    Any natural person who fulfils the following
  conditions may be entered on the list of professional
  representatives:
  (a) he must be a national of one of the Member
      States;
  (b) his place of business or employment must be in the
      Community;
  (c) he must be entitled to represent natural or legal
      persons in trade mark matters before the competent
      departments in the Member State where he practises
      or is employed. Where, in that State, the right to act is
      not conditional on the obtaining of a particular
      professional qualification, any person who acts in
      trade mark matters before the competent
      departments of that State and who applies for his
 ---pagebreak--- No C 230/38                           Official Journal of the European Communities                                31. 8. 84
                     ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
     name to be entered on the list must have practised
     continuously for not less than five years.
3.     Entry on the list shall be effected upon request,
provided it is accompanied by a certificate issued by the
central industrial property office showing that the
conditions laid down in paragraph 2 are satisfied.
                         TITLE IX                                                          TITLE IX
JURISDICTION AND PROCEDURE IN LEGAL                              JURISDICTION AND PROCEDURE IN LEGAL
ACTIONS RELATING T O COMMUNITY TRADE                             ACTIONS RELATING T O COMMUNITY TRADE
                         MARKS                                                             MARKS
                        Section 1                                                         Section 1
                      JURISDICTION                                                      JURISDICTION
                                                                                          Article 73a
                                                                 Unless otherwise specified in this Regulation, the
                                                                 Convention on Jurisdiction and Enforcement of
                                                                 Judgments in Civil and Commercial Matters, signed in
                                                                 Brussels on 27 September 1968, with the adjustments
                                                                 made by the Convention on the Accession to that
                                                                 Convention of the Kingdom of Denmark, of Ireland and
                                                                 of the United Kingdom of Great Britain and Northern
                                                                 Ireland, signed in Luxembourg on 9 October 1978 and by
                                                                 the Convention on the accession of the Hellenic Republic
                                                                 to that Convention, signed in Luxembourg on 25 October
                                                                 1982, which three Conventions are together hereinafter
                                                                 referred to as 'the Convention on Jurisdiction and
                                                                 Enforcement', shall apply to actions relating to
                                                                 Community trade marks and to decisions given in respect
                                                                 of such actions.
                        Article 74                                                        Article 74
   [Jurisdiction of national courts to hear actions for              [Jurisdiction of national courts to hear actions for
        infringement of Community trade marks]                            infringement of Community trade marks]
1.     Actions for infringement of a Community trade                    Unchanged.
mark shall be heard by the courts of the Member State in
which the defendant has his habitual residence or, if he
has no habitual residence in the Community, in which he
has a# place of business. If the defendant has neither
habitual residence nor place of business in one of the
Member States, such actions shall be heard by a court in
the Member State in which the plaintiff has his habitual
residence or, if he has no habitual residence in the
Community, in which he has a place of business. If neither
the defendant nor the plaintiff has his habitual residence
or a place of business in the Community, the action shall
be heard by a court in the State in which the seat of the
Office is situated. The Court hearing the action shall have
jurisdiction in respect of acts of infringement alleged to
have been committed in any Member State.
 ---pagebreak--- 31. 8. 84                              Official Journal of the European Communities                           No C 230/39
                      ORIGINAL PROPOSAL                                                AMENDED PROPOSAL
2.      Actions for infringement of a Community trade              2.      Unchanged.
mark may also be heard by a court in the Member State in
which an act of infringement has been committed. The
court hearing the action shall have jurisdiction only in
respect of acts of infringement alleged to have been
committed in that State.
3.      If the court hearing the action finds that the             3.     If the court hearing action finds that the
Community trade mark has been infringed by use of                  Community trade mark has been infringed by use of
another Community trade mark it shall order that the               another trade mark or another sign it shall order that the
latter shall not be used anywhere in the Community; in             latter shall not be used anywhere in the Community;
any case the order prohibiting the use of the Community            provisional measures shall be ordered similarly.
trade mark shall have effect only in the Member State in
which an act of infringement occurred.
                                                                  4.      Any court in a Member State seized of the
                                                                   Community trade mark matter may of its own motion or
                                                                  on application by any of the parties request the office for
                                                                   an expert opinion on the significance of the meanings,
                                                                  definitions and pronunciations of any words comprised in
                                                                  trade marks or other signs which are the subject of such an
                                                                   action. Such an opinion shall be treated as a part of the
                                                                  evidence in the case before the court in question.
                           Article 75                                                       Article 75
                 [Supplementary provisions]                                        [Supplementary provisions]
 Each Member State shall arrange that actions for                   Unchanged.
 infringement of Community trade marks which are
 brought at first instance shall be heard by a court which
 has jurisdiction for the whole of that State of for several
 jurisdictional districts therein.
                          Section 2                                                        Section 2
                         PROCEDURE                                                        PROCEDURE
                           Article 76                                                       Article 76
                      [Rules applicable]                                                [Rules applicable]
  Unless this Regulation otherwise provides, actions for            Unless this Regulation otherwise provides, actions and
  infringement of Community trade marks shall be subject            applications for provisional measures for infringement of
 to those rules of procedure applicable in the laws of the          Community trade marks shall be subject to the rules of
 Member States to actions for infringement of national              procedure applicable in the Member State in which the
 trade marks.                                                       court hearing the action is located to actions for
                                                                    infringement of national trade marks.
                           Article 77                                                       Article 77
      [Persons who are entitled to bring an action for                  [Persons who are entitled to bring an action for
                         infringement]                                                    infringement]
  1.     Actions for infringements may be brought by the            Unchanged.
 proprietor of a Community trade mark. A licensee may
 bring such actions only if the proprietor consents
 thereto.
 ---pagebreak--- No C 230/40                             Official Journal of the European Communities                            31. 8. 84
                       ORIGINAL PROPOSAL                                             AMENDED PROPOSAL
 2.     A licensee shall, for the purpose of obtaining
 compensation for damage suffered by him, be entitled to
 intervene in an infringement action brought by the
proprietor of the Community trade mark.
                          Article 78                                                     Article 78
       [Counterclaims for declaration of revocation                     [Counterclaims for declaration of revocation
                         or invalidity]                                                or invalidity]
1.     The court which is hearing an action for                     Unchanged.
infringement of a Community trade mark shall have
jurisdiction to give judgment on a counterclaim made by
the original defendant for a declaration that the rights of
the proprietor are revoked or that the trade mark is
invalid.
2.     No such counterclaim as aforesaid may be made if
an application or counterclaim relating to the same
subject-matter and cause of action, and involving the
same parties, has been determined by the Office.
3.     Article 47, paragraphs 2 to 5, shall apply.
4.     If the court declares that the rights of the proprietor
are revoked or that the Community trade mark is invalid,
it shall of its own motion order that the trade mark be
removed from the Register. When the judgment has
acquired the authority of a final decision, the Office shall
remove the trade mark from the Register upon
application by whichever of the parties first requests it.
                          Article 79                                                     Article 79
                    [Stay of proceedings]                                          [Stay of proceedings]
1.     The court which is hearing a counter-claim under            Unchanged.
paragraph 1 of Article 78 for a declaration that the rights
of the proprietor of a Community trade mark are revoked
or that the trade mark is invalid may, of its own motion or
on application by any of the parties, stay the proceedings
and invite the original defendant to present to the Office,
within such time as the court determines, an application
for a declaration of revocation or for a declaration of
invalidity.
2.     The court which is hearing any action relating to a
Community trade mark may also, of its own motion or on
application by any of the parties, stay the proceedings
where an application for a declaration that the rights of
the proprietor of a Community trade mark shall be
revoked or that such trade mark is invalid has been
submitted to the Office.
                          Article 80                                                     Article 80
                 [Defences as to the merits]                                    [Defences as to the merits]
In proceedings concerning a Community trade mark, the              Unchanged.
fact that the proprietor's rights therein have been revoked
or that the trade mark is invalid shall not be pleaded by
way of defence as to the merits.
 ---pagebreak--- 31. 8. 84                             Official Journal of the European Communities                            No C 230/41
                     ORIGINAL PROPOSAL                                                AMENDED PROPOSAL
                          TITLE X                                                           TITLE X
           EFFECT ON THE LAWS OF THE                                         EFFECT ON THE LAWS OF THE
                    MEMBER STATES                                                    MEMBER STATES
                        Section 1                                                         Section 1
        CUMULATIVE PROTECTION PROHIBITED                                  CUMULATIVE PROTECTION PROHIBITED
                         Article 81                                     '                  Article 81
 1.    Where the proprietor of a Community trade mark is          1.    Where the proprietor of a Community trade mark is
also the proprietor in a Member State of a national trade        also the proprietor in a Member State of a national trade
mark which is identical with or similar to the Community         mark which is identical with or similar to the Community
trade mark and is for goods or services for which the            trade mark and is for identical or similar goods or services
Community trade mark is registered, the effects of the           for which the Community trade mark is registered the
national trade mark shall, upon publication of the               effects of the national trade mark shall, upon publication
registration of the Community trade mark, be suspended           of the registration of the Community trade mark, be
for so long as the Community trade mark produces its             suspended, so far as they give identical rights to those
effects.                                                         given by the Community trade mark, for so long as the
                                                                 Community trade mark produces its effects.
                                                                 la.      Any person who, in one of the Member States,
                                                                 has brought an infringement action on the basis of a
                                                                 Community trade mark, or a national trade mark which
                                                                 does not give identical rights to those given by the
                                                                 Community trade mark, may not bring a new action
                                                                 against the same respondent or his assignee in respect of
                                                                 the same or an identical later infringement, in respect of
                                                                 the other trade mark.
2.     The proprietor of the Community trade mark shall,         2.     The proprietor of the Community trade mark
however, be entitled to claim that in the Member State in        may, however, take advantage, for the benefit of the
which the national trade mark exists, or continues to be         Community trade mark, of the date of acquisition of the
registered, his rights in the Community trade mark are           national trade mark, as regards the Member State in
effective from the date on which he acquired the national        which the national trade mark existed or remains
trade mark.                                                      registered.
3.     In derogation from paragraph 1, the effects of the        3.     In derogation from paragraph 1, the suspended
national trade mark shall not revive if the Community            effects of the national trade mark shall not revive if the
trade mark is removed from the Register following a              Community trade mark is removed from the register
declaration that the proprietor's rights therein are             following a declaration that the proprietor's rights therein
revoked on the ground of non-user.                               are revoked on the ground of non-user.
                        Section 2                                                        Section 2
PROHIBITION ON APPLICATION OF THE NATIONAL                       PROHIBITION ON APPLICATION OF THE NATIONAL
LAWS OF THE MEMBER STATES TO COMMUNITY                           LAWS OF THE MEMBER STATES TO COMMUNITY
                      TRADE MARKS                                                      TRADE MARKS
                         Article 82                                                       Article 82
Without prejudice to Article 45, the national laws of the        1.     Without prejudice to Articles 45 and 74 to 76, the
Member States shall not apply in relation to the validity or     law of Member States shall not apply in relation to the
use of Community trade marks.                                    use of Community trade marks. However, the law of
                                                                 Member States on the granting of provisional measures
                                                                 shall apply, provided that final injunctions shall be made
                                                                 only after the conclusion of the procedure provided for in
                                                                 Articles 46 and 47.
                                                                 2.     Paragraph 1 shall not prevent actions from being
                                                                 brought against a Community trade mark under the law
                                                                 of Member States relating in particular to civil liability
 ---pagebreak--- No C 230/42                            Official Journal of the European Communities                             31. 8. 84
                     ORIGINAL PROPOSAL                                               AMENDED PROPOSAL
                                                                  and unfair competition, to the extent that the use of a
                                                                  national trade mark may be prohibited under that law,
                                                                  provided that such actions are not brought on the same
                                                                  grounds as those contained in Articles 7 and 42.
                        Section 3                                                       Section 3
    CONVERSION INTO A NATIONAL TRADE MARK                            CONVERSION INTO A NATIONAL TRADE MARK
                       APPLICATION                                                    APPLICATION
                         Article 83                                                      Article 83
   [Request for the application of national procedure]              [Request for the application of national procedure]
1.     The central industrial property offices in the             Unchanged.
Member States shall not apply the procedure for
registration of a national trade mark on the basis of a
Community trade mark application or Community trade
mark, save where the applicant or proprietor of the trade
mark so requests and the following circumstances
obtain:
(a) the Community trade mark application has been
     refused, withdrawn or deemed to have been
     withdrawn;
(b) the Community trade mark ceases to have effect, but
     this provision shall not apply where the trade mark
     has been removed from the Register following a
     declaration that the proprietor's rights are revoked on
     the grounds of non-user.
2.     Paragraph 1 shall apply only in those Member
States where the Office or a national court has not decided
that grounds for refusal of registration or grounds of
invalidity exist under this Regulation in connection with
the Community trade mark application or in connection
with the Community trade mark itself.
3.     A request for conversion shall be filed within three
months after the application has been refused or
withdrawn or within three months after the Community
trade mark ceases to have effect. An applicant or
proprietor who does not file within the said period of
three months shall lose the right to claim priority for the
national trade mark from the date of filing of the
application or from the date of the Community trade
mark.
                          Article 84                                                     Article 84
        [Submission of the request for conversion]                       [Submission of the request for conversion]
1.      The Member States shall determine the conditions          Unchanged.
which are to apply to the submission of requests for
conversion.
2.      The Office shall, if so requested, and provided the
fee is paid, make available to the applicant or proprietor a
copy of the file relating to the Community trade mark
application or Community trade mark.
 ---pagebreak--- 31. 8. 84                             Official Journal of the European Communities                        No C 230/43
                      ORIGINAL PROPOSAL                                            AMENDED PROPOSAL
                          Article 85                                                    Article 85
            [Communication and publication]                                [Communication and publication]
1.     The central industrial property offices in the             Unchanged.
Member States shall inform the Office of all requests for
conversion which they receive.
2.     Receipt of any such request shall be recorded in the
Register of Community Trade Marks. If the Community
trade mark application has been published, the request
for conversion shall be published also.
                          TITLE XI                                                      TITLE XI
      COMMUNITY GUARANTEE MARKS AND                                  COMMUNITY GUARANTEE MARKS AND
         COMMUNITY COLLECTIVE MARKS                                     COMMUNITY COLLECTIVE MARKS
                          Article 86                                                    Article 86
              [Community guarantee marks]                                    [Community guarantee marks]
1.     Community guarantee marks may consist of any               Unchanged.
sign which is described as such when the guarantee mark
is applied for, if its purpose is to guarantee the quality,
method of manufacture or other common characteristics
of goods or services of different undertakings which use
the guarantee mark under the proprietor's control.
2.     Community guarantee marks shall not be used in
respect of goods or services produced or supplied by the
proprietor himself or by a person who is economically
associated with him.
                          Article 87                                                    Article 87
              [Community collective marks]                                   [Community collective marks]
Representative groups or bodies of manufacturers,                 Unchanged.
producers, suppliers of services, or traders may if they
have legal personality, apply for Community collective
marks which are described as such in the application and
 are capable of distinguishing the goods or services of their
members from those of other undertakings.
                          Article 88                                                    Article 88
                 [Application of provisions]                                   [Application of provisions]
 The provisions of this Regulation shall apply to                 Unchanged.
 Community guarantee marks and to Community
 collective marks, unless Articles 86 to 98 provide
 otherwise.
                          Article 89                                                    Article 89
                [Rules relating to the mark]                                   [Rules relating to the mark]
 1.     Application for Community guarantee marks or              Unchanged.
 Community collective marks shall be accompanied by
 regulations relating to them.
 ---pagebreak--- No C 230/44                            Official Journal of the European Communities                            3 1 . 8. 84
                      ORIGINAL PROPOSAL                                               AMENDED PROPOSAL
2.     The regulations governing a Community guarantee
mark shall set out the common characteristics of the
goods or services which the mark is intended to guarantee
and shall specify the detailed arrangements for real and
effective supervision of the use of the mark, and suitable
sanctions.
                          Article 90                                                      Article 90
                   [Refusal of application]                                        [Refusal of application]
1.     An application for a Community guarantee mark or            Unchanged.
Community collective mark shall be refused where the
provisions of Articles 86, 87 or 89 are not satisfied, or
where the regulations are contrary to public policy or to
accepted principles of morality.
2.     An application for a Community guarantee mark
shall also be refused if the public is liable to be misled as
regards the nature of the mark.
                          Article 91                                                      Article.91
[Opposition of Community guarantee marks on absolute               [Opposition of Community guarantee marks on absolute
                     grounds for refusal]                                            grounds for refusal]
1.     Any natural or legal person and any group or body          Unchanged.
which has the capacity to be a party to proceedings in
court, whether as plaintiff or defendant, for the purpose
of representing the interests of manufacturers, producers,
suppliers of services, traders or consumers may, within a
period of three months after publication of an application
for a Community guarantee mark, file opposition at
the Office, on any of the following grounds, against
registration of the mark:
(a) that under Article 6 or 86 the mark is ineligible for
     registration;
(b) that the regulations do not comply with the
     requirements of paragraph 2 of Article 89 or are
     contrary to public policy or to accepted principles of
     morality;
(c) that the public is liable to be misled as regards the
     nature of the mark.
2.     The opposition shall be expressed in writing and
shall specify the grounds on which it is based. It shall not
be treated as duly entered until the opposition fee has been
paid.
                          Article 92                                                      Article 92
              [Observations by third parties]                                  [Observations by third parties]
Article 33 shall apply in the cases described in                   Unchanged.
Article 90.
                          Article 93                                                      Article 93
                       [Use of marks]                                                  [Use of marks]
The use made of a Community guarantee mark or of a                 Unchanged.
Community collective mark by a person entitled to use it
 ---pagebreak--- 31. 8. 84                              Official Journal of the European Communities                           No C 230/45
                       ORIGINAL PROPOSAL                                                AMENDED PROPOSAL
shall be in conformity with the provisions of this
Regulation and with the conditions which it imposes as
regards such use.
                           Article 94                                                       Article 94
   [Amendment of the regulations governing the mark]                [Amendment of the regulations governing the mark]
1.      The proprietor of a Community guarantee mark or           Unchanged.
of a Community collective mark shall inform the Office of
any amendment to the regulations governing it.
2.      Amendments shall not be accepted if they are
inconsistent with the provisions of Article 89 or are
contrary to public policy or to accepted principles of
morality or, where they relate to Community guarantee
marks, are liable to mislead the public as regards the
nature of the mark or the guarantees provided by the
regulations.
3.      The Office shall publish the amendments to
regulations governing Community guarantee marks or
Community collective marks, or shall publish the fact
that the regulations have been amended. Where the
amendments are published in full, Articles 91 and 92 shall
apply.
4.     Amendments to regulations shall not take effect
until they have been registered.
                          Article 95                                                        Article 95
     [Persons who are entitled to bring an action for                  [Persons who are entitled to bring an action for
                        infringement]                                                     infringement]
1.      The provisions of Article 77 concerning the rights        Unchanged.
of licensees shall apply to every person who has authority
to use a Community guarantee mark or Community
collective mark.
2.     The proprietor of a Community guarantee mark or
Community collective mark shall also be entitled to claim
compensation for damage sustained by persons who have
authority to use the mark, if the damage arises in
consequence of an unauthorized use of the mark.
                          Article 96                                                        Article 96
                   [Grounds for revocation]                                          [Grounds for revocation]
The rights of the proprietor of a Community guarantee             Unchanged.
mark or of a Community collective mark shall be
revoked if:
(a) he uses the mark in a manner which is inconsistent
     with the provisions of paragraph 2 of Article 86,
     or
(b) he authorizes or acquiesces in the use of the mark on
     terms which are different from those prescribed by
     this Regulation.
                           Article 97                                                       Article 97
       [Grounds for and consequences of invalidity]                      [Grounds for and consequences of invalidity]
 1.     A Community guarantee mark or a Community                  1.     A Community guarantee mark or a Community
 collective m a r k which is registered in breach of the           collective m a r k which is registered in breach of the
 ---pagebreak--- No C 230/46                             Official Journal of the European Communities                                  31. 8. 84
                      ORIGINAL PROPOSAL                                                 AMENDED PROPOSAL
provisions of Article 90 shall be invalid. Such mark shall         provisions of Articles 90 or 91 shall be invalid. Such mark
 also be invalid if an amendment to the regulations                shall also be invalid if an amendment to the regulations
governing it is registered in breach of paragraph 2 of             governing it is registered in breach of paragraph 2 of
Article 94. The provisions of this Article shall not apply,        Article 94. The provisions of this Article shall not apply
however, if the proprietor of the mark, by further                 however if the proprietor of the mark, by further
amending the regulations, complies with the                        amending the regulations, complies with the
requirements of those Articles.                                    requirements of those Articles.
2.     Where a Community guarantee mark or                         2.     Unchanged.
Community collective mark is invalid in consequence of
amendment of the regulations governing it, it shall be
deemed not to have had the effects provided for in this
Regulation from the time when the amendment was
registered.
                           Article 98                                                        Article 98
[No applications to be made for registration of                    [No applications to be made for registration of
Community guarantee marks or Community collective                  Community guarantee marks or Community collective
marks which have been removed from the Register, and               marks which have been removed from the Register, and
              such marks are not to be used)                                     such marks are not to be used)
1.     Where a Community guarantee mark or a                       Unchanged.
Community collective mark has not been renewed, or the
proprietor's rights therein have been revoked, or the mark
has been declared invalid or has been surrendered, no
fresh application shall be made for registration thereof
and it shall not be used on any ground whatsoever for
goods or services which are similar to those in respect of
which it was registered until three years have elapsed since
the relevant non-renewal, revocation, surrender or
declaration of invalidity.
2.     Without prejudice to the application of
subparagraph (b) of paragraph 1 of Article 83, paragraph
1 of this Article shall not apply to the former proprietor of
the mark or to his successors in title thereto.
                                                                                             TITLE XIa
                                                                   SYMBOL T O INDICATE A COMMUNITY TRADE
                                                                                              MARK
                                                                                            Article 98a
                                                                   The symbol of the Greek capital letter epsilon contained
                                                                   within a circle, thus E may be used to indicate a registered
                                                                   Community trade mark.
                           TITLE XII                                                         TITLE XII
    THE COMMUNITY TRADE MARKS OFFICE                                  THE COMMUNITY TRADE MARKS OFFICE
                          Section 1                                                         Section 1
                   GENERAL PROVISIONS                                                 GENERAL PROVISIONS
                           Article 99                                                        Article 99
                         [Legal status]                                                    [Legal status]
 1.    The Office is a body of the Community and has               Unchanged.
legal personality.
 ---pagebreak--- 31. 8. 84                             Official Journal of the European Communities                      No C 230/47
                      ORIGINAL PROPOSAL                                           AMENDED PROPOSAL
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. For these purposes the Office
shall be represented by its President.
3.     The seat of the Office shall be located at . . .
                         Article 100                                                  Article 100
                            [Staff]                                                      [Staff]
1.     The Staff Regulations of officials of the European         Unchanged.
Communities, the conditions of employment of other
servants of the European Communities, and the rules
adopted jointly by the institutions of the European
Communities for purposes of the application of those
Staff Regulations and conditions of employment shall
apply to the staff of the Office, but without prejudice to
the application of Article 118 to the members of the
Boards of Appeal.
2.     Without prejudice to Article 105, the powers
conferred on each institution by the Staff Regulations,
and by the conditions of employment of other servants,
shall be exercised by the Office in relation to its staff.
                         Article 101                                                  Article 101
                [Privileges and immunities]                                  [Privileges and immunities]
The Protocol on the Privileges and Immunities of the              Unchanged.
European Communities shall apply to the Office.
                         Article 102                                                  Article 102
                          [Liability]                                                  [Liability]
1.     The contractual liability of the Office shall be           Unchanged,
governed by the law applicable to the relevant
contract.
2.     The Court of Justice of the European Communities
shall have jurisdiction to give judgment pursuant to any
arbitration clause contained in a contract concluded by
the Office.
3.     As regards 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 servants in the performance
of their duties.
4.     The Court of Justice shall have jurisdiction in
disputes relating to compensation for any such damage as
is referred to in paragraph 3.
5.     The personal liability of servants towards the
Office shall be governed by the provisions laid down in its
Staff Regulations or in the conditions of employment
applicable to its staff.
 ---pagebreak--- No C 230/48                           Official Journal of the European Communities                               31. 8. 84
                      ORIGINAL PROPOSAL                                              AMENDED PROPOSAL
                        Article 103                                                     Article 103
                        [Languages]                                                     [Languages]
The language of the Office for procedural purposes               The language of the Office for procedural purposes is . . .
                                                                 However the persons participating in the procedure shall
                                                                 be entitled to conduct written and oral proceedings in any
                                                                 language of the Community with translation and, in the
                                                                 case of hearings, simultaneous interpretation into the
                                                                 languages of the Office and those of the persons
                                                                 participating in the procedure in accordance with the
                                                                 Implementing Regulations.
                        Section 2                                                       Section 2
           ADMINISTRATION OF THE OFFICE                                     ADMINISTRATION OF THE OFFICE
                        Article 104                                                     Article 104
                 [Powers of the President]                                        [Powers of the President]
1.     The    Office   shall  be   administered    by    the     Unchanged.
President.
2.     To this end the President shall have inter alia the
following functions and powers:
(a) he shall take all necessary steps, including the
     adoption of internal administrative instructions and
     the publication of notices, to ensure the functioning
     of the Office;
(b) he may, after consulting the Advisory Committee,
     place before the Commission any proposal to amend
     this Regulation, the implementing Regulation, the
     rules of procedure of the Boards of Appeal, the fees,
     regulations or the financial rules;
(c) he shall draw up the estimates of revenues and
     expenditure of the Office and shall implement the
     budget;
(d) he shall submit a management report to the
     Commission and Advisory Committee each year;
(e) he shall exercise the powers conferred by paragraph 2
     of Article 100.
3.     The President shall be assisted by a number of
Vice-Presidents. If the President is unable to act, one of
the Vice-Presidents shall act in place of him.
                        Article 105                                                     Article 105
             [Appointment of senior officials]                                [Appointment of senior officials]
1.     The President of the Office shall be selected from a       1.    Unchanged.
list of three candidates which shall be prepared by the
Advisory Committee, and shall be appointed by the
Commission. Power to dismiss the President shall lie with
the Commission after consulting the Advisory
Committee.
 ---pagebreak--- 31. 8. 84                               Official Journal of the European Communities                          No C 230/49
                       ORIGINAL PROPOSAL                                               AMENDED PROPOSAL
2.     The Vice-Presidentsof the Office and the members            2.     The Vice-Presidents of the Office and the members
of the Boards of Appeal shall be appointed or dismissed as          of the Boards of Appeal shall be appointed and the
in paragraph 1.                                                     Vice-Presidents dismissed as in paragraph 1.
3.     Without prejudice to paragraph 1 of Article 118,            3.     Unchanged.
the Commission shall exercise disciplinary authority over
the employees referred to in paragraphs 1 and 2 of this
Article.
                          Article 106                                                     Article 106
                     [Control of legality]                                            [Control of legality]
 1.    The Commission shall be responsible for legal                Unchanged.
supervision of the acts of the President.
2.     It shall require that any unlawful act of the
President be altered or annulled.
3.     Any Member State, or any third party who is
directly and personally concerned, may refer to the
Commission any act of the President, whether express or
implied, so that the Commission will examine the legality
of that act.
                          Section 3                                                       Section 3
                  ADVISORY COMMITTEE                                               ADVISORY COMMITTEE
                          Article 107                                                     Article 107
                    [Creation and powers]                                            [Creation and powers]
 1.    An Advisory Committee to the Office is hereby                Unchanged.
established and is hereinafter referred to as 'the
Committee'.
2.     It shall settle the list of candidates provided for in
Article 105.
3.     It shall advise the President concerning matters for
which the Office is responsible.
4.     It shall be consulted in the cases provided for in this
 Regulation.
 5.    It may deliver opinions to the Commission and to
the President where it considers that this is necessary.
                          Article 108                                                     Article 108
                         [Composition]                                                   [Composition]
 1.    The Committee shall be composed of one                       Unchanged.
 representative of the Government or each Member State
 and one representative of the Commission, and their
 alternates.
 2.    The members who represent the Governments of
 the Member States, and the alternates of those members,
 shall be appointed by the Council. The member who
 represents the Commission, and his alternate, shall be
 appointed by the Commission.
 ---pagebreak---  No C 230/50                             Official Journal of the European Communities                           3 1 . 8. 84
                       ORIGINAL PROPOSAL                                             AMENDED PROPOSAL
3.     The term of office of members and of their
alternates shall be three years. It shall be renewable.
                          Article 109                                                    Article 109
                         [Presidency]                                                   [Presidency]
The Committee shall elect a President and Vice-President            Unchanged.
from among its members. If the President is unable to act
the Vice-President shall act in place of him.
                          Article 110                                                    Article 110
                          [Meetings]                                                     [Meetings]
 1.    Meetings of the Committee shall be convened by               Unchanged.
the President.
2.     The President of the Office may take part in the
deliberations.
3.     The Committee shall hold and ordinary meeting
once a year; it shall also meet at the request of its President
or of the Commission or of one-third of its members.
4.     It shall adopt rules of procedure.
5.     Its decisions shall be taken by simple majority vote.
Where, however, the Committee has to take a decision
under paragraph 1 or 2 or Article 105 or paragraph 1 of
Article 121, a majority of not less than three-quarters of
the votes shall be required.
                          Article 111                                                   Article 111
                      [Duties of office]                                             [Duties of office]
The members of the Committee shall be bound, even after             Unchanged.
cessation of their appointment, not to disclose or make
use of information which is of a confidential nature.
                          Section 4                                                     Section 4
           ARRANGEMENT OF DEPARTMENTS                                       ARRANGEMENT OF DEPARTMENTS
                          Article 112                                                   Article 112
         [Departments responsible for procedure]                           [Departments responsible for procedure]
For the purposes of implementing the procedures laid                Unchanged.
down in this Regulation, there shall be established within
the Office:
(a) an Examining Division;
(b) an Opposition Division;
(c) an Administration of Trade Marks Division;
(d) a Cancellation Division;
(e) Boards of Appeal.
 ---pagebreak--- 31. 8. 84                             Official Journal of the European Communities                      No C 230/51
                      ORIGINAL PROPOSAL                                            AMENDED PROPOSAL
                        Article 113                                                   Article 113
                   [Examining Division]                                          [Examining Division]
1.     The Examining Division shall be responsible for           Unchanged.
examining Community trade mark applications and for
deciding whether trade marks applied for are to be
registered.
2.     Decisions of the Examining Division shall be taken
by one of its members.
                        Article 114                                                   Article 114
                   [Opposition Division]                                         [Opposition Division]
1.     The Opposition Division shall be responsible for          Unchanged.
deciding whether a trade mark is to be registered as a
Community trade mark in cases where observations are
submitted or opposition is entered.
2.     Decisions of the Opposition Division shall be taken
by three of its members, of whom two shall not have
taken part in examining the application. One of the
deciding members must be qualified in law.
3.     Examination of the opposition may be conducted
by one of those three members.
                         Article 115                                                  Article 115
        [Administration of Trade Marks Division]                       [Administration of Trade Marks Division]
1.     The Administration of Trade Marks Division shall          Unchanged.
be responsible for doing all such acts of the Office in
relation to Community trade marks as lie outside the
competence of other departments thereof. It shall be
responsible inter alia for deciding what particulars are to
be recorded in or are to be deleted from the Register of
Community Trade Marks.
2.     Decisions of the Administration of Trade Marks
Division shall be taken by one of its members.
                         Article 116                                                  Article 116
                  [Cancellation Division]                                       [Cancellation Division]
1.     The Cancellation Division shall be responsible for        Unchanged.
examining applications for revocation or for declarations
of invalidity of Community trade marks.
2.     Decisions of the Cancellation Division shall be
taken by three members who are qualified in law.
3.     Examination of applications may be conducted by
one of those three m e m b e r s .
 ---pagebreak---  No C 230/52                           Official Journal of the European Communities                         31. 8. 84
                       ORIGINAL PROPOSAL                                            AMENDED PROPOSAL
                          Article 117                                                  Article 117
                      [Boards of Appeal]                                           [Boards of Appeal]
1.     The Boards of Appeal shall be responsible for              Unchanged.
examining appeals from decisions of the Examining
Division, Opposition Division, Cancellation Division
and Administration of Trade Marks Division.
2.     Each Board of Appeal shall be composed of three
members who are qualified in law.
                          Article 118                                                  Article 118
    [Independence of members of Boards of Appeal]                    [Independence of members of Boards of Appeal]
1.     The members of the Boards of Appeal shall be               Unchanged.
appointed for a term of five years and may not be removed
from office during that term, except where there are
serious grounds for removing them and the Court of
Justice, having been seized by the Commission, decides
that the member in question shall be removed.
2.     The members of the Boards of Appeal shall be
independent. In making their decisions they shall not be
bound by any instructions they may have received.
3.     The members of the Boards of Appeal shall not be
members of the Examining Division, Opposition
Division, Administration of Trade Marks Division or
Cancellation Division.
                          Article 119                                                  Article 119
                  [Exclusion and objection]                                     [Exclusion and objection]
1.     Members of the Cancellation Division or of the             Unchanged.
Boards of Appeal shall not take part in determining and
matter in which they have a personal interest or in which
they have previously been involved as representatives of
any of the parties, or in relation to which they
participated in taking the final decision in the course of
the registration procedure. Members of the Boards of
Appeal shall not take part in appeal proceedings if they
participated in making the decision under appeal.
2.     If, for any of the reasons mentioned in paragraph 1,
or for any other reason, a member of the Cancellation
Division or of a Board of Appeal considers that he should
not take part in determining a matter, he shall inform the
Division or Board accordingly.
3.     Members of the Cancellation Division or of a Board
of Appeal may be objected to by any party for any of the
reasons mentioned in paragraph 1, or if suspected of
partiality. An objection shall not lie if, while being aware
of a reason for objecting, the relevant party has taken any
 ---pagebreak--- 31. 8. 84                             Official Journal of the European Communities                       No C 230/53
                      ORIGINAL PROPOSAL                                           AMENDED PROPOSAL
procedural steps. No objection shall be based upon the
nationality of members.
4.     In the situations mentioned in paragraphs 2 and 3
the Cancellation Division and the Boards of Appeal shall
decide, without the participation of the member
concerned, as to the action to be taken. For the purposes
of making the decision the member objected to shall be
replaced in the Division or Board of Appeal by his
alternate.
                         Section 5                                                   Section 5
          BUDGET AND FINANCIAL CONTROL                                   BUDGET AND FINANCIAL CONTROL
                         Article 120                                                 Article 120
                           [Budget]                                                    [Budget]
1.     Estimates of all the Office's revenue and                 Unchanged.
expenditure shall be prepared for each financial year and
shall be shown in the Office's budget, and each financial
year shall correspond with the calendar year.
2.     The revenue and expenditure shown in the budget
shall be in balance.
3.     Revenue means (without prejudice to other types of
income) total fees payable under the fees, regulations, and
to the extent that it is necessary a subvention recorded
under a specific heading of the budget of the European
Communities, Commission Section.
                         Article 121                                                 Article 121
                [Preparation of the budget]                                  [Preparation of the budget]
1.     The President shall draw up each year an estimate         Unchanged.
of the Office's revenue and expenditure for the following
year and shall send it to the Commission not later than 31
March in each year, together with an establishment plan
and an opinion from the Committee.
2.     The Commission shall annex the estimate to the
preliminary draft budget of the European Communities.
The Commission may attach an opinion on the estimate
along with an alternative estimate. If a subvention under
paragraph 3 of Article 120 is necessary, the Commission
may propose such amendment of the estimate as it
considers requisite.
3.     The Office's budget shall be adopted by the budget
authority in accordance with the same procedure as the
general budget.
                         Article 122                                                 Article 122
                          [Control]                                                   [Control]
1.     Not later than 31 March in each year the President         Unchanged,
shall transmit to the Commission and to the Court of
 ---pagebreak--- No C 230/54                          Official Journal of the European Communities                             31. 8. 84
                    ORIGINAL PROPOSAL                                                AMENDED PROPOSAL
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 206a of the Treaty.
2.    The European Parliament shall give a discharge to
the President of the Office in accordance with the
procedure laid down in Article 206b of the Treaty.
3.    Control of commitment and payment of all
expenditure and control of the existence and recovery of
all revenue of the Office shall be carried out by the
Financial Controller of the Commission.
                       Article 123                                                      Article 123
                  [Financial provisions]                                           [Financial provisions]
The Financial Regulation applicable to the general budget       Unchanged.
of the European Communities shall apply to the Office
without prejudice to the provisions contained in this
Regulation or to special provisions determined by
regulation adopted by the Council in accordance with the
conditions laid down in Article 209 of the Treaty.
                       Article 124                                                      Article 124
                    [Fees regulations]                                               [Fees regulations]
1.    The fees regulations shall determine in particular              Unchanged.
the amounts of the fees and the ways in which they are to
be paid.
2.    The amounts of the fees shall be fixed in such             2.    The amounts of the fees shall be fixed in such a
manner that the Office's revenue covers its                     manner that the Office's revenue covers its expenditure
expenditure.                                                    after a transitional period.
3.    The fees regulations shall be adopted on a proposal       3.     Unchanged.
from the Commission by qualified majority vote of the
Council after obtaining the opinion of the European
Parliament.
                        TITLE XIII                                                       TITLE XIII
                  FINAL PROVISIONS                                                FINAL PROVISIONS
                       Article 125                                                      Article 125
         [Community implementing provisions]                              [Community implementing provisions]
1.    The rules implementing this              Regulation,       Unchanged.
particularly as regards the calculation and extension of
periods of time to which a time limit applies, shall be
adopted in an implementing Regulation.
2.    The implementing Regulation and the rules of
procedure of the Boards of Appeal shall be adopted by the
Council, by qualified majority vote, on a proposal from
the Commission.
 ---pagebreak--- 31. 8. 84                            Official Journal of the European Communities                     No C 230/55
                     ORIGINAL PROPOSAL                                           AMENDED PROPOSAL
                        Article 126                                                 Article 126
           [National implementing provisions]                           [National implementing provisions]
The Member States shall within 12 months following the          Unchanged.
adoption of this Regulation bring into operation the
measures which are requisite for the purpose of
implementing Articles 75 and 84 hereof and shall
forthwith inform the Commission of those measures.
                        Article 127                                                 Article 127
Save as regards Articles 75 and 84, this Regulation shall       Unchanged.
enter into force 12 months after it has been published in
the Official Journal of the European Communities.
This Regulation shall be binding in its entirety and
directly applicable in all Member States.