CELEX: 51980PC0635(02)
Language: en
Date: 1980-11-19
Title: Proposal for a Council Regulation on Community trade marks

31. 12. 80                           Official Journal of the European Communities                         No C 351/5
(b) it is liable, in consequence of the use made of it                                Article 17
       in respect of the goods or services for which it is
       registered, to mislead the public, particularly as       The laws of the Member States shall determine the
       to the nature, quality or geographical origin of         procedure for registration and for invalidation of
       those goods or services.                                trade marks and the effects of invalidation. They may
                                                                further provide that a trade mark to which one of the
                                                               grounds for invalidation mentioned in this Directive
                                                               applies shall not be capable of defeating the claims of
                            Article 15                         third parties.
Where a ground for refusal of registration or for                                    Article 18
invalidation of a trade mark exists in respect of only
part of the goods or services for which that mark has           1. The Member States shall bring into force the
been applied for or registered, refusal of registration         laws, regulations and administrative provisions
or invalidation shall cover only the goods or services         necessary to comply with this Directive not later
concerned.                                                     than...
                                                               They shall immediately inform the Commission
                                                               thereof.
                          Article 16
                                                               2. The Member States shall communicate to the
Without prejudice to Article 8, Member States whose            Commission the text of the main provisions of
laws authorize the registration of collective marks or         national law which they adopt in the field governed
guarantee marks may provide that such marks be                 by this Directive.
refused registration, or shall be invalidated, on other
grounds than those specified in Article 2 and 14                                      Article 19
where the function of those marks so requires.                 This Directive is addressed to the Member States.
                             Proposal for a Council Regulation on Community trade marks
                        (Submitted by the Commission to the Council on 25 November 1980)
THE COUNCIL OF THE EUROPEAN                                    those obtaining in a national market. In order to
COMMUNITIES                                                    create a market of this kind and make it increasingly
                                                               a single market, not only must the barriers to free
Having regard to the Treaty establishing the                   movement of goods and services be removed and
European Economic Community, and in particular                 arrangements be instituted which ensure that
Article 235 thereof,                                           competition is not distorted, but, in addition, legal
                                                               conditions must be created which enable
Having regard          to   the    proposal    from   the      undertakings to adapt their activities to the scale of
Commission,                                                    the Community, whether in manufacturing and
Having regard to the opinion of the European                   distributing goods or in providing services. For those
                                                               purposes, trade marks enabling the products and
Parliament,
                                                               services of undertakings to be distinguished by
Having regard to the opinion of the Economic and               identical means troughout the entire Community,
Social Committee,                                              regardless of frontiers, should feature amongst the
                                                               legal instruments which undertakings have at their
Whereas:                                                       disposal;
it is desirable to promote throughout the Community            action by the Community would appear to be
a harmonious development of economic activities                necessary for the purpose of attaining the
and a continuous and balanced expansion by                     Community's said objectives. Such action involves
establishing a common market which functions                   the creation of Community arrangements for trade
properly and offers conditions which are similar to            marks whereby undertakings can by means of one
 ---pagebreak--- No C 351/6                         Official Journal of the European Communities                              31. 12. 80
system of procedure obtain Community trade marks              the protection conferred by a Community trade mark
to which uniform protection is given and which                is bound up with the concept of similarity of signs,
produce their effects throughout the entire area of the       similarity of goods and services and the possibility of
Community;                                                    confusion arising therefrom. The purpose of
                                                              protection is to guarantee the trade mark's function
the Treaty does not provide the requisite powers to           as an indicator of origin. It is essential that the said
create a legal instrument such as a Community trade           concepts be interpreted strictly so that the freedom of
mark. The barrier of territoriality of the rights             action of persons who are in competition with each
conferred on proprietors of trade marks by the laws           other is not needlessly restricted. It is necessary, in
of the Member States cannot be removed by                     particular, that by simultaneous comparison of signs,
approximation of laws. In these circumstances the             goods and services it be certain in each case that
only appropriate way of opening up unrestricted               customers are in reality likely to confuse products
economic activity in the whole of the common                  and services which are identified by those signs. For
market for the benefit of undertakings is to create           the purpose of determining whether a sign which is
trade marks which are governed solely by a law of the         alleged to infringe a trade mark which consists of a
Community, that law being directly applicable in all          number of elements is so similar to it that confusion
 Member States;                                               may arise between them, the trade mark must be
                                                              viewed as a whole. In order to determine whether a
the Community law relating to trade marks                     Community trade mark and a sign consisting of
 nevertheless does not replace the laws of the Member         words sound the same or are at any rate phonetically
 States on trade marks, for at the stage to which the         similar, it is not possible to disregard the fact that the
 establishment of the common market has now                   Community exists and that the public is increasingly
 advanced it would not appear to be proper to require         aware of the correct pronunciation of words in the
 undertakings to apply for registration of their trade        languages which are spoken therein;
 marks as Community trade marks. National trade
 marks do in fact continue to be necessary for those           in view of the fact that the function of a Community
 undertakings whose activities are such that                  trade mark is to indicate origin, the proprietor must
 protection of their trade marks at Community level is         not be entitled to prohibit its use by a third party in
 of no use to them;                                            relation to goods which have been put into
                                                               circulation in the Community or outside it, under the
 in order not to detract from the unity of the system of       trade mark, by him or with his consent, nor to
 Community trade marks and from the primacy of the             prohibit its use, for reasons based on trade marks
 Community law which governs them, such trade                  law, by a licensee who supplies the goods or services
 marks must not be subject to the laws of the Member           under the trade mark outside the territory covered by
 States, save insofar as this Regulation expressly             the licence;
 provides;
                                                               there is no justification for protecting Community
 the rights in a Community trade mark are not to be            trade marks or, as against them, any trade mark
 capable of being obtained otherwise than by                   which has been registered before them, except where
 registration, and registration is to be refused if the        the trade marks are actually used;
 trade mark is not distinctive, is unlawful or is not
 available. In the latter case the Office should not          a Community trade mark is to be regarded as an
 withhold registration unless the prior right which           object of property which exists separately from the
 conflicts with the trade mark is a trade mark which is       undertaking whose products or services are
 registered and used in the common market, if the             designated by it. Accordingly, a Community trade
 proprietor of the prior right has entered opposition to      mark must be capable of being, inter alia, transferred
 registration of the trade mark as a Community trade          to, or charged as security in favour of, a third party
 mark and all efforts to produce an amicable                   and of being the subject-matter of licences. The
 settlement between the parties have failed;                   conditions applicable for revocation and invalidity
                                                               of trade marks must also be regulated in a uniform
 the interests of proprietors of prior private rights          manner;
 which have not been registered will also be protected,
 whatever those rights may be, for any proprietor of a          decisions regarding the validity of Community trade
 prior right, whether registered or not, is entitled to         marks must have absolute effect and cover the entire
 claim that a Community trade mark, once registered,            area of the common market, for this is the only way
 is invalid. It may in due time be appropriate,                 of preventing inconsistent decisions on the part of
  depending particularly on the degree of integration           the courts and the Office and of ensuring that the
 then achieved by the Community, to contemplate                 unitary character of Community trade marks is not
  new measures for the purpose of settling conflicts            undermined. The rules contained in the Convention
 between Community trade marks and prior rights                 on jurisdiction and enforcement of judgments in civil
  existing at national level;                                   and commercial matters apply to all actions at law
 ---pagebreak--- 31. 12. 80                       Official Journal of the European Communities                          No C 351/7
relating to Community trade marks, save where this         qualified in law and who will be responsible for
Regulation derogates from those rules;                     examining, from the point of view of both substance
                                                           and law, the decisions made by the Office's
administrative measures are necessary at Community         divisions;
level for implementing in relation to every trade
mark the trade marks law created by this Regulation.
It is therefore essential, while retaining the             in order to ensure that in interpreting and applying
Community's existing institutional structure and           this Regulation the law is observed, the decisions
balance of powers, to establish a Community Trade          made by the boards of appeal must be open to appeal
Marks Office which is independent in relation to           to the Court of Justice. This judicial control must be
technical matters and has legal, administrative and        available even in cases where none of the parties
financial autonomy. To this end it is necessary and        appeals against an erroneous decision made by a
appropriate that it should be a body of the                board of appeal. The Commission must in such cases
Commission having legal personality and exercising         be enabled to enter an appeal in the Court of Justice
the precisely delimited implementing powers which          in the interest of the law;
are conferred on it by this Regulation, and that it
should operate within the framework of Community            the institutional structure of the Community, the
law without detracting from the competences                 balance of powers and the democratic control of the
exercised by the Community's Institutions;                  Office's budget can be maintained only if the
                                                           Assembly and the Council adopt the Office's budget
in order to ensure that parties who are affected by        in conformity with the provisions contained in the
decisions made by the Office are protected by the law      Treaty which relate to the adoption of the budget of
in a manner which is entirely suited to the special        the European Communities, and utilise, in relation to
character of trade marks law, it is necessary to           the Office's revenue and expenditure, together with
establish, within the Office, boards of appeal             the Audit Board, the powers of control which are
composed of three independent members who are              conferred by the Treaty.
HAS ADOPTED THIS REGULATION:
                                                     TITLE I
                                            GENERAL PROVISIONS
                      Article 1                            surrendered or be the subject of a decision revoking
                                                           the right of the proprietor or declaring it invalid, nor
              (Community trade marks]                      shall its use be prohibited, save in respect of the entire
                                                           area of the Community.
 1. A trade mark for goods or services which
conforms with the conditions contained in this
regulation and is registered in manner herein
provided is hereinafter referred to as a 'Community
trade mark'.                                                                       Article 2
2. A Community trade mark shall have identical                        (Community Trade Marks Office]
effect throughout the Community. No trade mark
shall be registered as a Community trade mark              For the purposes of the application of this regulation
otherwise than for the entire area of the Community;       a Community Trade Marks Office, hereinafter
a Community trade mark shall not be transferred or         referred to as 'the Office', is hereby established.
 ---pagebreak--- No C 351/8                        Official Journal of the European Communities                              31. 12. 80
                                                      TITLE II
                                  THE LAW RELATING TO TRADE MARKS
                       Section 1                                                      Article 6
   DEFINITION OF A COMMUNITY TRADE MARK                                   [Absolute grounds for refusal]
     OBTAINING A COMMUNITY TRADE MARK
                                                             1. Trade marks which do not conform to the
                        Article 3                            requirements of Article 3 or 4, and trade marks which
                                                             are not distinctive, shall not be registered; in
       [Signs of which a Community trade mark                particular the following trade marks shall not be
                      may consist]                           registered:
A Community trade mark may consist of words                  (a) those which consist solely of signs or indications
                                                                  which in trade may be requisite for the purpose
(including surnames), designs, letters, numerals,
                                                                  of showing the kind, quality, quantity, intended
 combinations of colours, the shape of goods or of                purpose, value, geographical origin, the time of
their packaging, or of any other signs which are                  production of the goods or of rendering of the
 capable of distinguishing the goods or services of one           service, or other characteristics of the goods or
undertaking from those of other undertakings.                     service;
                                                            (b) those which consist solely of signs or indications
                        Article 4                                 which are customarily used to designate the
[Persons who can be proprietors of Community trade                goods or service in the current language of the
                         marks]                                   trade or in the bona fide and established
                                                                  practices thereof.
1. The following persons may be proprietors of
Community trade marks:                                      2. In addition,         the   following   shall  not    be
                                                            registered:
(a) nationals of any Member State, and nationals of          (a) the shape which results from the nature of the
     any non-Member State who are habitually                      goods themselves, or which has some technical
     resident in the Community or who have a real                 consequence; also the shape of the goods where
     and effective industrial or commercial place of              this affects their intrinsic value;
     business in the Community;
                                                             (b) trade marks which include signs or indications
(b) nationals of any State which is party to the Paris
                                                                  liable to mislead the public, particularly as to the
     Convention for the protection of industrial
                                                                  nature, quality or geographical origin of the
     property, hereinafter referred to as 'the Paris
                                                                  goods or service;
     Convention', and persons who are deemed to be
     such by the operation of Article 3 thereof;             (c) trade marks which are contrary to public policy
                                                                  or to accepted principles of morality, and those
 (c) nationals of any other State which accords to                which fall within the provisions of Article 6ter of
      nationals of the Member States the same trade               the Paris Convention.
      mark protection as it accords to its own
      nationals.
                                                             3. Paragraphs 1 and 2 shall apply notwithstanding
                                                             that the grounds of non-registrability obtain in only
 2. Legal persons, including those companies and             part of the common market.
 associations which under the law that governs them
 are regarded as legal persons, shall be treated as          4. Paragraph 1 (a) shall not apply if the trade mark
 nationals within the meaning of paragraph 1.                has become distinctive in consequence of the use
                                                             which has been made of it.
                        Article 5
                                                                                      Article 7
 [Means whereby the rights in a Community trade mark
                      are obtained]                                        [Relative grounds for refusal]
 The rights in a Community trade mark are obtained            1. A trade mark shall not be registered if it is
 by registration.                                            identical with or similar to an earlier trade mark, and
 ---pagebreak--- 31. 12. 80                        Official Journal of the European Communities                         No C 351/9
the goods or services designated by each of the trade             services which are not similar to those for which
marks are identical with or similar to each other, with           the Community trade mark is registered, where
the result that there arises a serious likelihood of              the Community trade mark is of wide repute and
confusion on the part of the public in the territory in           use of that sign is detrimental to that repute.
which the earlier trade mark has effect.
                                                             2. Use of the following kinds, inter alia, may be
 2. Earlier trade marks are trade marks of the               prohibited under paragraph (1):
 following kinds in respect of which the date of
application for registration preceded the date of           (a) affixing the sign to the goods or to the packaging
application for registration of the Community trade              thereof;
mark, taking account, where appropriate, of the             (b) putting the goods on the market under that sign,
priorities claimed in respect of those trade marks:              or supplying services thereunder;
(a) Community trade marks,                                  (c) using the sign on business correspondence or
(b) trade marks registered in a Member State,                    invoices.
      including those registered in the Benelux
      countries,                                            3. The rights conferred by a Community trade mark
(c) trade marks registered under international              shall prevail against third parties from the date of
       arrangements which have effect in a Member           publication of registration of the trade mark.
       State;                                               Reasonable compensation may, however, be claimed
                                                            in respect of matters arising after the date of
and trade marks which, on the date on which                 publication of a Community trade mark application,
application is made for registration of them as             which matters would, after publication of
Community trade marks, are well known in a                  registration of the trade mark, be prohibited by virtue
Member State, in the sense in which the words 'well-        of that publication. The court seised of the case shall
known' are used in Article 6 bis of the Paris               stay the proceedings until the registration has been
Convention.                                                 published.
3. Where an agent or representative of the rightful
proprietor of a trade mark applies for registration
thereof in his own name without the proprietor's
                                                                                      Article 9
consent, registration shall be refused unless the agent
or representative justifies his action.                            (Reproduction of Community trade marks
                                                                                  in dictionaries]
4. This Article applies only where the proprietor of
the earlier trade mark, or of a trade mark, to which
paragraph (3) applies, has been successful in                1. The publisher of a dictionary, encyclopaedia or
opposing registration of the Community trade mark,          similar work shall ensure that any reproduction of a
his opposition having been in conformity with the           Community trade mark therein is accompanied by an
provisions of this Regulation.                              indication that the trade mark is registered.
                                                             2. Where the publisher fails to comply with the
                      Section 2                              requirements of paragraph 1 he shall) at the request
      EFFECTS OF COMMUNITY TRADE MARKS                      of the proprietor of the Community trade mark,
                                                            correct the matter at his own expense in the next
                       Article 8                            edition of the publication.
    (Rights conferred by a Community trade mark]
1. A Community trade mark confers on the
proprietor exclusive rights therein. The proprietor                                  Article 10
shall be entitled to prohibit any third party from
using in the course of trade, save with his consent:               (Limitation of the effects of a Community
                                                                                    trade mark]
(a) any sign which is identical with or similar to the
      Community trade mark in relation to goods or          A Community trade mark does not entitle the
      services which are identical with or similar to       proprietor to prohibit a third party from using in the
      those for which the Community trade mark is           course of trade:
      registered, where such use involves a serious
      likelihood of confusion on the part of the            (a) his own surname and address;
      public;                                               (b) indications concerning the kind, quality,
(b) any sign which is identical with or similar to the           quantity, intended purpose, value, geographical
      Community trade mark in relation to goods or               origin, the time of production of the goods or of
 ---pagebreak--- No C 351/10                       Official Journal of the European Communities                           31. 12. 80
     rendering of the service, or other characteristics      2. The rules of procedure to be applied shall be
     of the goods or service;                                determined in accordance with Article 76 and the
(c) the trade mark for the purpose of indicating the         Articles which follow it.
     intended purpose of accessories or spare
     parts;
                                                                                    Section 3
provided he does not use them as a trade mark.
                                                                    USE OF COMMUNITY TRADE MARKS
                                                                                    Article 13
                       Article 11
                                                             1. A Community trade mark shall be put to serious
(Limits of the rights conferred by a Community trade        use in the common market, consistently with the
                         mark]                              terms of this Regulation, in connection with the
                                                            goods or services in respect of which it is registered,
 1. A Community trade mark does not entitle the             unless there exist legitimate reasons for not doing
proprietor to prohibit its use in relation to goods         so.
 which have been put on the market under that trade
mark by the proprietor or with his consent.                  2. Circumstances arising independently of the will
                                                             of the proprietor of a Community trade mark are
                                                             alone sufficient to constitute legitimate reasons for
2. Paragraph 1 shall not apply:
                                                             not using it.
(a) Where, the goods having been put on the market
     outside the Community, the proprietor is legally        3. Use of a Community trade mark by a licensee or
     entitled to oppose their importation into the           by a person who is associated economically with the
     Community;                                              proprietor shall be deemed to constitute use by the
                                                             proprietor.
(b) Where the condition of the goods is changed or
     impaired after they have been put on the
     market;
(c) Where the goods are re-packaged by a third                                       Section 4
     party; but this provision shall not apply where
     the third party proves that the use made of the         DURATION AND ALTERATION OF COMMUNITY
     trade mark by the proprietor, taking into                                   TRADEMARKS
     consideration his system of marketing, tends to
     fragment the markets artificially and that the re-                              Article 14
     packaging could not affect the original
     condition of the goods, if the third party informs                     (Duration of registration]
     the proprietor beforehand that the re-packaged
     goods are to be put on the market and the new           Community trade marks shall be registered for a
     packaging indicates that the goods have been re-        period of ten years from the date of filing of the
     packaged by the third party.                            application. Without prejudice to the application of
                                                             Article 37, registration may be renewed for further
                                                             periods of ten years.
                       Article 12                                                    Article 15
      ISupplenKntary application of national law                                    (Alteration]
               relating to infringement]
                                                             1. No alteration of a Community trade mark shall
1. The effects of Community trade marks shall be             be allowed during the period of registration or on
governed solely by the provisions of this Regulation.        renewal thereof.
Save as otherwise herein provided, the civil sanctions
for infringement of a Community trade mark shall be          2. Where, however, a Community trade mark
governed by the law on civil sanctions for                   includes the name and address of the proprietor,
infringement of a national trade mark which applies         these may be altered, provided the alteration does not
in the Member State in which the Court hearing the           substantially change the trade mark. Any alteration
action is located.                                           shall be registered.
 ---pagebreak---  31. 12. 80                         Official Journal of the European Communities                         No C 351/11
                        Section 5                               A transfer shall nevertheless take effect before
                                                                registration vis-a-vis third parties who have acquired
 COMMUNITY TRADE MARIS AS OBJECTS OF                            rights in the trade mark after the date of transfer but
                        PROPERTY                               who knew of the transfer at the date on which they
                                                               acquired those rights.
                        Article 16
                                                                                       Article 18
 [Dealing with Community trade marks as national
                       trade marks)                                                 [Rights in rem}
                                                               1. A Community trade mark may be charged as
 1. Unless Articles 17 to 22 otherwise provide, a              security or otherwise be the subject of security rights
 Community trade mark as an object of property shall           in rem, separately from the undertaking.
 be regarded in all respects, including its geographical
 coverage of the entire area of the Community, as a            2. Security rights in rem which are created over a
trade mark registered in the Member State in which,            Community trade mark, and any transfer of those
according to the Register of Community trade marks,            rights, shall not have effect vis-a-vis third parties
the applicant had his habitual residence or principal          until the rights have been registered, or until the
place of business or, failing either of these, a place of      transfer has been registered, as the case may be.
business, on the date of filing of the Community
trade mark application.
2. In cases which are not provided for by                                             Article 19
paragraph 1 the Member State referred to in that
paragraph shall be the Member State in which the                                  [Levy of execution]
headquarters of the Office is situated.
                                                               1. A Community trade mark may be levied in
                                                               execution and be the subject of enforcement
                                                              measures following thereon, separately from the
                                                              undertaking.
                        Article 17                            2. As regards the procedure for enforcement
                        ITraasfer]                            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
 1. A Community trade mark may be transferred,                exclusive jurisdiction.
separately from any transfer of the undertaking, in
respect of some or all of the goods or services for
which it is registered,                                                               Article 20
2. A transfer of the whole of the undertaking shall,                     [Insolvency and similar proceedings!
unless some other intention appears, have effect to
transfer any Community trade mark of the                      Until such time as common rules are in operation
undertaking.                                                  between the Member States, the only Member State
3. Without prejudice to paragraph 2, an assignment            in which a Community trade mark may form part of
of a Community trade mark shall be made in writing;           the assets in an insolvency or in similar proceedings
otherwise it shall be void.                                   shall be the Member State in which those proceedings
                                                              are first opened.
4. Where it is clear from the transfer documents
that because of the transfer the Community trade
mark will mislead the public concerning the nature,                                   Article 21
quality or geographical origin of the goods or
services in respect of which it is registered, the Office                             [Licensing]
shall not register the transfer.
                                                              1. Licences may be granted in respect of a
5. A transfer shall not affect rights acquired by third       Community trade mark for some or all of the goods
parties before the date of transfer.                          or services for which it is registered.
6. A transfer shall not take effect vis-a- vis the Office     2. The rights conferred by a Community trade mark
or third parties until it has been registered, and then       shall not be asserted vis-d-vis a licensee unless he
only to the extent that the transfer documents require.       operates his licence beyond the period of time for
 ---pagebreak--- No C 351/12                         Official Journal of the European Communities                              31. 12. 80
which it was granted or uses the trade mark in                 4. Paragraphs 5 and 6 of Article 17 apply to
relation to goods or services for which it has not been        licences.
registered or does not comply with the proprietor's
instructions concerning the quality of the goods or
services.                                                                              Article 22
3. The proprietor of a Community trade mark shall                      (The right of property in an application
ensure that the quality of the goods manufactured or                        for a Community trade mark]
of the services provided by the licensee is the same as
that of the goods manufactured or of the services              Articles 16 to 21 apply to applications               for
provided by the proprietor.                                    Community trade marks.
                                                       TITLE III
                             APPLICATIONS FOR COMMUNITY TRADE MARKS
                        Section 1                                                      Section 2
FILING OF APPLICATIONS AND THE CONDITIONS                                              PRIORITY
                WHICH GOVERN THEM
                                                                                       Article 26
                        Article 23                                                 (Right of Priority]
                 (Filing of applications]                       1. A person who has duly filed an application for a
                                                               trade mark in or for any State which is a party to the
 An application for a Community trade mark shall be            Paris Convention, or his successors in title, shall, for
 filed at the Office.                                         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
                        Article 24                             which the application has been filed, be entitled to a
                                                               right of priority for a period of six months following
            [Conditions governing applications]               the date of filing of the first application.
  1. The following, inter alia, shall be included in an        2. Every filing which is equivalent to a regular
 application for a Community trade mark:                       national filing under the national law of the State
                                                               where it was made or under bilateral or multilateral
 (a) particulars identifying the applicant;                    agreements shall be recognised as giving rise to a
 (b) a list of the goods or services;                          right of priority.
 (c) a representation of the trade mark;                       3. Regular national filing means any filing which is
 (d) where paragraph 2 of Article 72 applies, the              sufficient to establish the date on which the
       relevant power of attorney.                             application was made, whatever the outcome of the
                                                               application.
 2. The fees shall be paid upon filing 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
                        Article 25                             filed in or for the same State shall, for the purpose of
                                                               determining priority, be considered as the first
                      (Date of filing]                         application, provided that, at the date of filing of the
                                                               subsequent application, the previous application has
 The date of filing of a Community trade mark                  been withdrawn, abandoned or refused, without
 application shall be the date on which the documents           leaving any rights outstanding, and no right of
 specified in Article 24 are received, provided the             priority has been claimed in respect of it. No right of
 minimum fees have at that date been received by the            priority shall thereafter be claimed in respect of the
 Office.                                                        previous application.
 ---pagebreak--- 31. 12. 80                          Official Journal of the European Communities                         No C 351/13
5. If the first filing has been made in a State which is                               Article 28
not a party to the Paris Convention, paragraphs 1 to 4
shall apply only in so far as that State grants on the                            (Right of Priority]
basis of a first filing made at the Office a right of
priority which is subject to conditions equivalent to         The right of priority shall operate so that the date of
those laid down in the Paris Convention and which             first filing shall be treated as the date of filing of the
has equivalent effect.                                        Community trade mark application, save for
                                                              purposes of the application of Article 14.
                        Article 27
                                                                                       Article 29
                    (Claiming priorityl
                                                               (Equivalence of Community filing and national filing
An applicant who wishes to take advantage of the
priority of a previous application shall file a                For purposes of the application of Article 4 of the
declaration of priority. The Office may require                Paris Convention, a Community trade mark
production of a copy of the previous application and,          application which has been accorded a date of filing
if necessary, a translation of it in the Office's              shall in the Member States be equivalent to a regular
procedural language.                                           national filing.
                                                       TITLE IV
                                           REGISTRATION PROCEDURE
                         Section 1                            or services covered by the Community trade mark
                                                              application, the application shall be rejected as
           EXAMINATION OF APPLICATIONS                        regards those goods or services.
                                                              2. Where the trade mark includes an element which
                                                              is not distinctive, registration of the trade mark may
                          Article 30                          be subject to the applicant's agreeing, if the Office
 (Examination as to whether the application satisfies the     requests him to do so, that his rights in the trade mark
             relevant substantive conditions]                 are not exclusive.
 1. A Community trade mark application shall be               3. The application shall not be rejected before the
rejected if it cannot be accorded a date of filing            applicant has been allowed the opportunity of
because the relevant conditions have not been                 withdrawing or amending the application or of
satisfied.                                                    submitting his observations on the matter.
2. A Community trade mark application which is                4. The application shall be published in respect of
irregular as to form, or in respect whereof the amount        the goods or services for which it is not ineligible for
of fees paid is equal to the minimum fee chargeable           registration.
but less than the prescribed fee, shall be rejected. No
right of priority may be claimed in respect of an             5. Where, after publication, the application is
application where the priority provisions contained           rejected under paragraph 1 or 2, the decision that it
in this Regulation have not been complied with.               has been rejected shall, upon becoming final, be
                                                              published.
3. Paragraph 2 shall not apply until the applicant
has been requested to correct the irregularities or to
pay the prescribed amount of fees.
                                                                                       Article 32
                         Article 31
                                                                             (Amendment of application]
   (Examination as to absolute grounds for refusal]
                                                              A Community trade mark application may upon
1. Where, under Article 6, a trade mark is ineligible         request be amended by restricting the list of goods or
for registration in respect of some or all of the goods       services, or by rectifying the name and address of the
 ---pagebreak--- No C 351/14                       Official Journal of the European Communities                                31. 12. 80
applicant, errors of wording or of copying, or other         2. If the applicant so requests or the Office so
obvious mistakes, provided that such rectification           requires, the proprietor of an earlier Community
does not substantially change the trade mark.                trade mark who has entered an opposition shall
                                                             furnish proof that that trade mark has been used in
                                                             manner required by Article 13 during the period of
                                                             five years preceding the date of publication of the
                                                             Community trade mark application, provided the
                                                             earlier Community trade mark has at that date been
                       Section 2                             registered for not less than five years. In the absence
                                                             of proof to this effect, the opposition shall be
        OBSERVATIONS BY THIRD PARTIES                        rejected. If the earlier Community trade mark has
                  AND OPPOSITION                             been used in relation to part only of the goods or
                                                             services for which it is registered it shall, for purposes
                                                             of the examination of the opposition, be deemed to
                                                             be registered in respect only of that part. This
                                                             provision shall apply where the earlier trade mark is
                       Article 33                            a trade mark of the kind described in subparagraph
             (Observations by third parties)                 (b) or (c) of paragraph 2 of Article 7.
Any natural or legal person and any group or body            3. The Office shall, if it thinks fit, invite the parties
representing manufacturers, producers, traders or            to make a friendly settlement. The Office shall make
consumers, may, after publication of a Community             proposals to them for this purpose if it considers that
trade mark application, submit to the Office written         conditions can be imposed on the prospective use of
observations explaining on which grounds, under              the trade mark applied for and of the earlier trade
Article 6, the trade mark is ineligible for                  mark in such manner that there will be no serious
registration.                                                likelihood of confusion on the part of the public.
                                                             4. If examination of the opposition reveals that the
                       Article 34                            trade mark is not eligible for registration in respect of
                                                             some or all of the goods or services for which the
                      [Opposition]
                                                             Community trade mark application has been made,
                                                             the application shall be rejected in respect of those
1. Proprietors of trade marks of the kinds referred          goods or services. Otherwise the opposition shall be
to in Article 7 may within three months following            rejected.
publication of a Community trade mark application
enter opposition to registration of the trade mark.
Registration may be opposed only on grounds of                5. Where a final decision is taken to refuse the
ineligibility under Article 7.                                application the decision shall be published.
2. Opposition shall be expressed in writing and
shall specify the grounds on which it is made. It shall
not be treated as duly entered until the opposition fee
has been paid.
3. If the opposing party has no habitual residence
or place of business within the Community he shall,
if the applicant so requests, provide security for the                               Section 3
costs of the proceedings. The amount of security and
the date by which it must be provided shall be                                    REGISTRATION
determined by the Office. If security is not provided,
the opposition shall be treated as having been
withdrawn.
                                                                                     Article 36
                        Article 35                           Where an application meets the requirements of this
                                                              Regulation and the registration fee has been paid in
              (Examination of opposition)                    due time, the trade mark shall be registered as a
                                                             Community trade mark. If the fee is not paid within
 1. When examining the opposition the Office shall           the period prescribed the application shall be deemed
invite the parties to submit their observations.             to have been withdrwan.
 ---pagebreak--- 31. 12. 80                         Official Journal of the European Communities                      # N o C 351/15
                                                       TITLE V
                                                     RENEWAL
                       Article 37                            registration. Failing this, they may validly be
                                                             submitted, filed and paid within six months
 1. Where it is desired to renew the registration of a       following the date of expiry of the registration, but
Community trade mark an application shall be made.           on payment of an additional fee.
A declaration of user shall be produced and fees shall
be paid.                                                     4. Where the application is submitted, the
2. The declaration of user shall specify the goods or        declaration of user produced and the fees paid in
services in respect of which the Community trade             respect of part only of the goods or services for which
mark has been used in manner required by Article 13          the Community trade mark is registered, registration
during the period of five years prior to expiry of the       shall be renewed only for that part of the goods or
registration.                                                services.
3. The application shall be submitted, the                   5. Renewal shall take effect from the date on which
declaration of user produced and the fees paid not           the existing registration expires. The renewal shall be
earlier than six months before expiry of the                 registered.
                                                      TITLE VI
                                   SURRENDER, REVOCATION, INVALIDITY
                      Section 1                                   period of five years; but no person may claim
                                                                  that the proprietor's rights in a Community trade
                     SURRENDER                                    mark should be revoked where, during the
                                                                  interval between expiry of the five-year period
                        Article 38                                and filing of the application for revocation, the
 1. A Community trade mark may be surrendered in                  trade mark has been used in manner required by
respect of some or all of the goods or services for               Article 13 and this use was made in good
which it is registered.                                           faith;
                                                             (b) if, in consequence of acts of the proprietor, the
2. Surrender shall be effected by the proprietor of               trade mark has become the common name for a
the trade mark by means of writing delivered to the               product or service in respect whereof it is
Office. The surrender shall not have effect until it is           registered;
recorded in the Register.
                                                             (c) if, in consequence of the use made of it in respect
3. Surrender shall be registered only with the                    of the goods or services for which it is registered,
consent of any third party who has a right in rem                 it is liable to mislead the public, particularly as
which is recorded in the Register. If a licence is                to the nature, quality or geographical origin of
recorded in the Register, the surrender shall be                  those goods or services.
recorded only if the proprietor of the trade mark
proves that he has previously informed the licensee          2. Where the grounds for revocation of rights exist
of his intention to surrender it.                            in respect of part only of the goods or services for
                                                             which the Community trade mark is registered, the
                                                             rights of the proprietor shall be revoked in respect
                      Section 2                              only of that part of the goods or services.
       GROUNDS FOR AND CONSEQUENCES
                   OF REVOCATION
                                                                                     Article 40
                       Article 39                                           [Consequences of revocation!
               (Grounds for revocation)                      1. Revocation shall be declared by a decision
                                                             adopted in conformity with the terms of this
 1. The rights of the proprietor of a Community
                                                              Regulation.
trade mark shall be revoked:
(a) if the trade mark has not been used in a manner          2. The Community trade mark shall, within the
     required by Article 13 during an unbroken               tenor of the decision revoking it, be deemed not to
 ---pagebreak--- No C 351/16                         Official Journal of the European Communities                              31. 12. 80
have had the effects provided for in this Regulation                 shall not apply if the right subsists only in a
from the time when any of the grounds for revocation                 particular locality. The expression 'some other
existed.                                                             prior right' means any sign used in the course of
                                                                     trade before filing of the Community trade mark
3. Subject to the provisions contained in the laws of                application and which, under the law of the
the Member States relating to actions for                            Member State which governs the sign, entitles
compensation for damage caused by negligence or by                   the proprietor to prohibit the use of any later
lack of good faith on the part of the proprietor of the              trade mark.
trade mark, or relating to unjust enrichment, the
retroactive effect of revocation shall not affect:            2. A Community trade mark shall also be invalid if
(a) any decision on infringement which has                    it contains:
      acquired the authority of a final decision and          (a) a work protected by copyright or by an
      has been executed before the decision revoking                 industrial design or model;
      the rights of the proprietor was adopted;
                                                              (b) a portrait;
(b) any contract concluded before the decision
                                                              (c) a surname, where use of the trade mark in
      revoking the rights of the proprietor was
                                                                     relation to the goods or services for which it is
      adopted, in so far as the contract has been
                                                                     registered is liable to cause serious detriment to
      performed before the adoption of that decision;
                                                                     the honour, reputation or credit of the person
      but restitution of sums paid under the contract
                                                                     whose surname it is.
      may be claimed on grounds of equity to the
      extent justified by the circumstances.                  3. A Community trade mark shall not be declared
                                                              invalid where the proprietor of any such right as is
                                                              mentioned in paragraph 1 or 2 has consented to
                           Section 3                          registration of that trade mark.
        GROUNDS FOR AND CONSEQUENCES                          4. Where the proprietor of any such right as is
                      OF INVALIDITY                           mentioned in paragraph 1 or 2 applies for a
                                                              declaration that a Community trade mark is invalid,
                         Article 41                           he shall not enter a new application for that purpose
                                                              on the basis of another such right which he could
             (Absolute grounds of invalidity]                 have averred in support of the first application.
1. A Community trade mark which is registered in               5. Paragraph 3 of Article 41 shall apply.
breach of the provisions of Article 6 shall be
invalid.
                                                                                        Article 43
2. Where subparagraph (a) of paragraph 1 of
Article 6 has been contravened, the Community                                 (Consequences of invalidity]
trade mark shall nevertheless not be declared invalid          1. Where a decision is adopted declaring a
if it has become distinctive after registration.              Community trade mark invalid, the trade mark shall,
                                                              within the tenor of the decision declaring it invalid,
3. Where the ground of invalidity exists in respect
                                                              be deemed never to have had the effects provided for
of part only of the goods or services for which the
                                                              in this Regulation from the time when the trade mark
Community trade mark is registered, the trade mark
                                                              came into existence.
shall be invalid as regards only that part of the goods
or services.                                                  2. Paragraphs 1 and 3 of Article 40 shall apply to
                                                              invalidity of Community trade marks.
                         Article 42
              (Relative grounds of invalidity]                                         Article 44
                                                                      (Limitation in consequence of acquiescence]
1. A Community trade mark shall be invalid:
                                                                1. Where the proprietor of any such right as is
(a) where a trade mark of the kind described in                mentioned in paragraph 1 or 2 of Article 42 has
       Article 7 exists in opposition to it and the             acquiesced in the use of a Community trade mark for
       conditions set out in paragraph 1 or 3 of that           a period of three successive years, he shall not be
       Article obtain;                                          entitled to apply for a declaration that the trade mark
(b) where some other prior right exists in opposition           is invalid on the ground that that right, or some other
      to it and there is a serious likelihood of               right of his, exists; but this provision shall not apply
      confusion on the part of the public between the          if the Community trade mark was applied for in bad
      trade mark and that right; but this provision            faith.
 ---pagebreak--- 31. 12. 80                          Official Journal of the European Communities                           No C 351/17
2. Paragraph 1 shall not affect the right of the                    design or model, the owner of the relevant
proprietor of a well-known trade mark, as defined in                surname, the person who is the subject of the
paragraph 2 of Article 7, to apply for a declaration                portrait, or the persons who are entitled under
that a Community trade mark is invalid, provided he                 the laws of the Member States to exercise the
makes the application within the period of five years               rights in question.
following registration of the Community trade
mark.                                                          2. The application shall be submitted in writing and
                                                              shall specify the grounds on which it is made. Before
3. The proprietor of a Community trade mark shall             the fee has been paid the application shall be treated
not be entitled to oppose use of the right referred to in     as not having been submitted.
paragraph 1 even though the proprietor of that right
is no longer entitled to apply for a declaration that          3. Paragraph 3 of Article 34 shall apply.
the Community trade mark is invalid.                           4. An application for revocation or for a
                                                               declaration of invalidity shall not lie if an application
                        Article 45                             relating to the same subject-matter and cause of
                                                               action, and involving the same parties, has been
    [Prior rights subsisting in particular localities]         adjudicated on by a court in a Member State.
1. The proprietor of a prior right subsisting in a
particular locality may oppose use of the Community                                   Article 47
trade mark in the territory where his right is valid.                     [Examination of the application]
2. Paragraph 1 shall cease to apply if the proprietor          1. The Office may stay the proceedings of its own
of the prior right has acquiesced in the use of the           motion or at the request of any of the parties if, under
Community trade mark for a period of three                    paragraph 1 of Article 78, a counterclaim for
successive years; but this provision shall not apply if       revocation of the rights of the proprietor of the
the Community trade mark was applied for in bad               Community trade mark or for a declaration that the
faith.                                                        Community trade mark is invalid has been filed with
                                                              a court in a Member State.
3. The proprietor of the Community trade mark
shall not be entitled to oppose use of the right              2. When the Office examines the application for
referred to in paragraph 1 even if that provision has         revocation of rights or for a declaration of invalidity,
ceased to apply.                                              it shall as often as necessary invite the parties to file
                                                              observations on communications from third parties
                                                              or issued by itself.
                       Section 4
                                                              3. The Office may of its own motion contend that
PROCEEDINGS IN THE OFFICE IN RELATION TO                      the Community trade mark, having been registered in
             REVOCATION OR INVALIDITY                         breach of Article 3, Article 4 or subparagraphs (b)
                                                               and (c) of paragraph 2 of Article 6, is invalid.
                        Article 46                            4. If the proprietor of the Community trade mark so
[Application for revocation or for a declaration of           requests or the Office so requires, the proprietor of an
                        invalidity]                           earlier Community trade mark, being a party to the
                                                              invalidity proceedings, shall furnish proof that that
1. An application for revocation of the rights of the         trade mark has been used in manner required by
proprietor of a Community trade mark or for a                 Article 13 during the period of five years preceding
declaration that the trade mark is invalid may be             the date of the application for a declaration of
submitted to the Office:                                      invalidity, provided that at that date the earlier
(a) where Articles 39 and 41 apply, by any natural            Community trade mark has been registered for not
      or legal person and any group or body which has         less than five years. If, at the date on which the
      the capacity to be a party to proceedings in             Community trade mark application was published,
      court, whether as plaintiff or defendant, for the       the earlier Community trade mark has been
      purpose of representing the interests of                 registered for not less than five years, the proprietor
      manufacturers, producers, suppliers of services,         of the earlier Community trade mark shall furnish
      traders or consumers.                                    proof that, in addition, the conditions contained in
                                                               paragraph 2 of Article 35 were satisfied at that date.
(b) where paragraph 1 of Article 42 applies, by the            In the absence of such proof the application for a
      proprietor of the trade mark or other prior              declaration of invalidity shall be rejected. Where the
      right;                                                   earlier Community trade mark has been used in
(c) where paragraph 2 of Article 42 applies, by the            relation to part only of the goods or services for
      owner of the copyright, the proprietor of the            which it is registered it shall, for the purposes of
 ---pagebreak--- No C 351/18                           Official Journal of the European Communities                              31. 12. 80
examining the application for a declaration of                   can be imposed on the prospective use of the
invalidity, be deemed to be registered in respect only           Community trade mark, of the earlier trade mark or
of that of the goods or services. This provision shall           of the prior right in such manner that there will be no
apply where the earlier Community trade is a trade               serious likelihood of confusion on the part of the
mark of the kind described in subparagraph (b) or (c)            public.
of paragraph 2 of Article 7.
5. In the course of the invalidity proceedings the               6. Where a final decision is taken revoking the
Office shall, if it thinks fit, invite the parties to make a     rights of the proprietor of the Community trade mark
friendly settlement The Office shall make proposals              or declaring it invalid, it shall be removed from the
to them for this purpose if it considers that conditions         register.
                                                          TITLE VII
                                                          APPEALS
                          Article 48                             2. If the appeal is not allowed within one month
                                                                 after receipt of the statement of grounds, the appeal
       (Decisions from which an appeal will lie]                 shall forthwith be remitted to the Board of Appeal
1. An appeal shall lie from decisions of the Office.             without comment on the merits.
It shall have suspensive effect.
                                                                                         Article 52
2. An appeal against a decision which does not
terminate proceedings as regards one of the parties                              (Examination of appeals]
may only be made in conjunction with an appeal
against the final decision, unless the latter                    If the appeal properly lies, the Board of Appeal shall
contemplates separate appeal.                                    as often as necessary invite the parties to file
                                                                 observations on communications from another party
                                                                 or issued by itself.
                          Article 49                                                     Article 53
(Persons entitled to appeal and to be parties to                                   [Decision on appeal]
                  proceedings on appeal]
                                                                 In deciding the appeal the Board of Appeal may
Any party to proceedings who is adversely affected               exercise any power which lies within the competence
by a decision may appeal. The other parties to those             of the dapartment whose decision is the subject of the
proceedings shall automatically be parties to the                appeal, or it may remit the case to that department
appeal proceedings.                                              for further action. In the latter case the department
                                                                 shall, in so far as the facts are the same, be bound by
                          Article 50                             the decision of the Board of Appeal and by the
                                                                 grounds on which it is based.
            [Time limit and form of appeal]
 Notice of appeal shall be filed in writing at the Office                                Article 54
within two months after notification of the decision
from which the appeal is made. Until such time as the                         [Further appeal by the parties]
fee for appeal has been paid the notice shall be                  1. A further appeal to the Court of Justice of the
treated as not having been filed. Within four months             European Communities shall lie from decision of the
after notification of the decision a written statement           Boards of Appeal. Such further appeals shall have
setting out the grounds of appeal shall be filed.                suspensive effect.
                                                                 2. The further appeal may be lodged on grounds of
                          Article 51                             want of jurisdiction, infringement of an essential
                   (Interlocutory revision]                      procedural requirement, infringement of the Treaty,
                                                                 of this Regulation or of any rule of law relating to
 1. If the department whose decision is contested                their application, in so far as that rule of law is not a
considers that the appeal properly lies and is well-             provision of national law, or misuse of power. The
 founded, it shall rectify its decision. This shall not          Court of Justice shall not question the facts as found
 apply where the appellant is in the proceedings                 by and recorded in the decision of the Board of
 opposed by another party.                                       Appeal.
 ---pagebreak---  31. 12. 80                          Official Journal of the European Communities                         No C 351/19
 3. The further appeal may be made by any party to              a decision of the Board of Appeal. The further appeal
 the proceedings before the Board of Appeal who is              may be lodged on grounds of want of jurisdiction,
 adversely affected by its decision.                            infringement of an essential procedural requirement,
                                                                infringement of the Treaty, of this Regulation or of
 4. The further appeal shall be lodged with the Court           any rule of law relating to their application, in so far
 of Justice within two months after notification of the         as that rule of law is not a provision of national law,
 decision of the Board of Appeal.                               or misuse of power. The provisions contained in this
                                                                paragraph shall apply to final decisions only.
 5. If the Court of Justice remits the case for further
 action to the Board of Appeal, the Board shall, in so          2. Where the decision is reversed, the parties shall
 far as the facts are the same, be bound by the decision        not be entitled to plead this fact.
 of the Court of Justice and by the grounds on which it
 is based.                                                      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
                         Article 55                             Court within two months after receipt of
                                                                notification.
        [Further appeal in the interest of the law]
                                                                4. No costs or expenses shall be charged or
 1. The Commission may in the interest of the law               reimbursed in connection with such proceedings as
 lodge a further appeal to the Court of Justice against         are provided for in this Article.
                                                       TITLE VIII
                                                     PROCEDURE
                         Section 1                             2. Oral proceedings before the Examining
                                                                Division, Opposition Division or Administration
                 GENERAL PROVISIONS                            Division shall not be public.
                                                                3. Oral proceedings, including delivery of the
                                                               decision, shall, as regards the Cancellation Division
                          Article 56                           and the Board of Appeal, be public, in so far as the
  (Statement of grounds on which decisions are based]           department before which the proceedings are taking
                                                               place does not decide otherwise in circumstances
Decisions of the Office shall state the grounds on             where serious and unwarranted disadvantages could
which they are based. They shall be based only on              arise from admitting the public, particularly for any
grounds or on evidence on which the parties involved           of the parties to the proceedings. In derogation from
have had the opportunity of presenting their                   paragraph 2, this present paragraph shall apply to
observations.                                                  oral proceedings before the Opposition Division in
                                                               cases where Article 91 applies.
                         Article 57
(Examination of the facts by the Office of its own                                     Article 59
                          morion]                                                 [Taking of evidence]
In proceedings before it the Office shall examine the          1. In any proceedings before the Office, the means
facts of its own motion. It may disregard facts or             of giving or obtaining evidence shall include the
items of evidence which have not been submitted in             following:
due time by the parties involved.                              (a) hearing the parties;
                                                               (b) requests for information;
                         Article 58
                                                               (c) production of documents;
                    [Oral proceedings]                         (d)   hearing the witnesses;
1. If the Office considers that oral proceedings               (e)   opinions by experts;
would be useful they shall be held either on motion of
the Office itself or at the request of any of the parties      (f)   inspection;
to the proceedings.                                            (g)   sworn statements in writing.
 ---pagebreak--- No C 351/20                         Official Journal of the European Communities                              31. 12. 80
2. The relevant department may commission one of               2. Applications shall be filed in writing within two
its members to examine the evidence adduced.                   months after the cause of non-compliance with the
                                                               time-limit has ceased to operate. The act omitted
3. If the Office considers it necessary that a party,          shall be completed within this period. Application
witness or expert give evidence orally, it shall               may be made only within the period of one year
either:                                                        following the expiry of the time-limit which has not
                                                               been observed. Where the formalities for renewal
(a) issue a summons requiring the relevant person to           have not been complied with, the period specified in
      appear before it, or                                     paragraph 3 of Article 37 shall be deducted from the
(b) request the competent judicial authority in the            one-year period.
      country of residence of the relevant person to
      take the evidence, as provided in paragraph 3 of         3. An application shall state the grounds on which
      Article 70.                                              it is based and the facts on which it relies. It shall not
                                                               be regarded as duly filed until the fee for restoration
4. A party, witness or expert who is summoned                  of rights has been paid.
before the Office may request it to allow his evidence         4. The decision on the application shall be
to be heard by the competent judicial authority in his         determined by the department which is competent in
country of residence. On receipt of such request, or if        relation to the omitted act.
there is no response to the summons, the Office may,
in accordance with the provisions of paragraph 3 of            5. The provisions of this Article shall not apply to
Article 70, request the competent judicial authority to        the time-limits referred to in paragraph 2 of this
take the evidence of that person.                              Article nor to the time-limit specified in paragraph 1
                                                               of Article 26.
5. If a party, witness or expert gives evidence before
the Office, the Office may, if it considers it advisable       6. The applicant for or proprietor of a Community
that the evidence be given in solemn form, request             trade mark shall not oppose the use of a sign in good
the competent authority in the country of residence            faith by a third party during the period between the
of the relevant person to hear his evidence under the          time when the rights in the application or in the trade
requisite conditions.                                          mark are lost and the restoration of those rights.
6. When the Office requests a competent judicial                                      Article 62
authority to take evidence, it may request it to take
                                                                           (Reference to general principles]
the evidence in solemn form and to permit a member
of the relevant department to attend the hearing and           In the absence of procedural provisions in this
question the party, witness or expert either through           Regulation, the Office shall take into account the
the intermediary of that judicial authority or                 principles of procedural law which are generally
directly.                                                      recognized in the Member States.
                                                                                      Article 63
                        Article 60
                                                                        (Termination of financial obligations]
                         [Service)                             1. The Office's right to require payment of fees shall
The Office shall effect service of all decisions and           be extinguished after four years from the end of the
summonses, and of notices which cause time-limits to           calendar year in which the fees become due for
run or which are required to be served either in               payment.
pursuance of other provisions of this Regulation or            2. Rights against the Office for the refunding of fees
by order of the President of the Office.                       or of sums overcharged by the Office shall be
                                                               extinguished after four years from the end of the
                        Article 61                             calendar year in which the rights arose.
                 {Restitutio in integrum]                      3. A request for payment of a fee shall have effect to
                                                               interrupt the period specified in paragraph 1, and a
 1. Where, in spite of having taken all due care in the        written claim for refund, stating the grounds on
particular circumstances, the applicant for or                 which it is made, shall have effect to interrupt the
proprietor of a Community trade mark or any other              period specified in paragraph 2. After interruption
party to proceedings before the Office has been                the period shall begin to run again immediately and
unable to observe a time-limit vis-A-vis the Office, his       shall terminate at the latest six years after the end of
 rights shall, upon application, be restored if his            the calendar year in which it originally commenced,
failure to respect the time-limit has resulted directly,       unless in the meantime judicial proceedings to
by virtue of the provisions of this Regulation, in the         enforce the right have been instituted; in this case the
 loss of any right or means of redress.                        period shall end not earlier than one year after the
 ---pagebreak--- 31. 12. 80                        Official Journal of the European Communities                         No C 351/21
judgment has acquired the authority of a final               shall be entitled to proceed to enforcement by
decision.                                                    bringing the matter before the competent body
                                                             designated by national law.
                       Section 2
                                                             4. Enforcement shall not be suspended except by
                         COSTS                               decision of the Court of Justice. Control as to the
                                                             regularity of enforcement measures shall, however,
                                                             reside with the national courts.
                       Article 64
                         [Costs]
                                                                                    Section 3
1. Each party to opposition proceedings or to
proceedings for revocation or for a declaration of           INFORMATION OF THE PUBLIC AND OF THE
invalidity shall pay the costs incurred by him unless        OFFICIAL AUTHORITIES OF THE MEMBER
the Opposition Division or Cancellation Division                                      STATES
decides that it would be equitable that the costs of
oral proceedings or of certain stages in the
examination be borne in some other manner. A                                         Article 66
decision concerning divison of costs may, if applied
for, be adopted where a Community trade mark                          [Register of Community trade marks]
application, an opposition, an application for
revocation of rights or an application for a                 The Office shall keep a register which shall be known
declaration of invalidity is withdrawn, or where             as the Register of Community trade marks, wherein
registration of a Community trade mark is not                shall be recorded the particulars whose registration is
renewed or where the proprietor of a Community               required by this Regulation. The Register shall be
trade mark surrenders it.                                    open to public inspection.
2. Paragraph 1 shall also apply to the costs incurred
by each of the parties to appeal proceedings. A Board
                                                                                     Article 67
of Appeal decision on division of costs may cover all
essential items including travel and subsistence and                            [Inspection of files]
the remuneration of an agent, adviser or advocate.
                                                              1. The files relating to Community trade mark
3. The Registrar of the Opposition Division or               applications which are awaiting publication shall not
Cancellation Division shall upon application                 be made available for inspection without the consent
determine the amount of costs to be paid where a             of the applicant.
decision is taken to divide them. The amount so
determined may upon application be amended if the            2. Any person who proves that the applicant for a
Opposition Division or Cancellation Division so              Community trade mark has stated, directly or
decides.                                                     indirectly, that after the trade mark has been
                                                             registered he will invoke it against that person, may,
                       Article 65                            without the applicant's consent, inspect the file
       [Enforcement of decisions which determine             before the application is published.
                  the amount of costs]
                                                             3. After publication of a Community trade mark
                                                             application the files relating to the application and to
 1. Final decisions of the Office which determine the        the trade mark itself may be inspected on request.
amount of costs shall be enforceable.                         Certain documents in the file may, however, be
2. Enforcement shall be governed by the rules of             withheld from inspection.
 civil procedure applicable in the State in which it
 takes place. Subject only to verification that the
 relevant document is authentic, the enforcement                                    Article 68
 clause or endorsement shall be appended by the
 national authority appointed for that purpose by the                  [Community Trade Marks Bulletin]
 government of each Member State; the governments
 shall inform the Office and the Court of Justice of the     The Office shall publish periodically a Community
 identity of each such national authority.                   Trade Marks Bulletin containing entries made in the
                                                             Register of Community trade marks and all other
 3. When, upon application by the person                     particulars of which publication is required under
 concerned, these formalities have been completed, he        this Regulation.
 ---pagebreak--- No C 351/22                        Official Journal of the European Communities                            31. 12. 80
                        Article 69                            2. However, any natural or legal person whose
                                                              place of habitual residence or principal place of
      [Classification of Community trade marks]               business ist not in the Community shall be
                                                              represented before the Office by a professional
Goods and services for which Community trade                  representative.
marks are applied for shall be classified in
conformity      with the Office's           system of         3. Natural or legal persons whose place of habitual
classification.                                               residence or principal place of business is in the
                                                              Community may act vis-a-vis the Office through one
                        Article 70                            of their employees; due authority shall be conferred
                                                              for this purpose on such employee. An employee of a
         [Administrative and legal cooperation]               legal person to which this paragraph applies may, in
1. Unless this Regulation otherwise provides, the             derogation from paragraph 2 in appropriate cases,
Office and the courts or authorities of the Member            also represent other legal persons which are
Staates shall on request give aisstance to each other         economically associated with that legal person.
by supplying information or sending files for
inspection. Where the Office sends files for
inspection to courts, Public Prosecutors' Offices or                                 Article 73
central industrial porperty offices the restrictions laid
down in Article 67 shall not apply.                                        [Professional representatives]
2. Information        received in pursuance of                 1. Professional representation of natural or legal
paragraph 1 shall be used only for the purpose for            persons before the Office may be undertaken by:
which it was requested. The Office and the courts or
authorities of the Member States, and the officials           (a) any advocate who is authorized to practice in a
and other employees thereof, shall not disclose                    Member State and whose place of business is in
information received by them in pursuance of                       the Community, to the extent that he can act in
paragraph 1 if that information is of a confidential               that State as a representative in trade mark
nature.                                                            matters; or
                                                              (b) those professional representatives whose names
3. Upon receipt of letters rogatory from the Office,               appear on the list maintained for this purpose by
the courts or other competent authorities of the                   the Office.
Member States shall undertake on its behalf any
enquiries or other judicial measures to the extent that       2. Any natural person who fulfils the following
they have power to do so.                                     conditions may be entered on the list of professional
                                                              representatives:
                        Article 71                            (a) he must be a national of one of the Member
                                                                   States;
               {Exchange of publications]
                                                              (b) his place of business or employment must be in
The Office and the central industrial property offices             the Community;
of the Member States shall on request despatch to             (c) he must be entitled to represent natural or legal
each other for their own use, free of charge, one or               persons in trade mark matters before the
more copies of their respective publications.                      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
                       Section 4                                   qualification, any person who acts in trade mark
                                                                   matters before the competent departments of
                   REPRESENTATION                                  that State and who applies for his name to be
                                                                   entered on the list must have practised
                                                                   continuously for not less than five years.
                        Article 72
   [General principles applicable to representation]          3. Entry on the list shall be effected upon request,
                                                              provided it is accompanied by a certificate issued by
 1. No person shall be compelled to be represented            the central industrial property office showing that the
before the Office by a professional representative.           conditions laid down in paragraph 2 are satisfied.
 ---pagebreak--- 31. 12. 80                         Official Journal of the European Communities                         No C 351/23
                                                      TITLE IX
                   JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING
                                        TO COMMUNITY TRADE MARKS
                       Section 1                                                     Section 2
                    JURISDICTION                                                    PROCEDURE
                                                                                      Article 76
                        Article 74
                                                                                 (Rules applicable]
(Jurisdiction of national courts to bear actions for
       infringement of Community trade marks]                 Unless this Regulation otherwise provides, actions
                                                              for infringement of Community trade marks shall be
1. Actions for infringement of a Community trade              subject to those rules of procedure applicable in the
mark shall be heard by the courts of the Member               laws of the Member States to actions for
State in which the defendant has his habitual                 infringement of national trade marks.
residence or, if he has no habitual residence in the
Community, in which he has a place of business. If                                    Article 77
the defendant has neither habitual residence nor
pHrce of business in one of the Member States, such           (Persons who are entitled to bring an action for
actions shall be heard by a court in the Member State                               infringement]
in which the plaintiff has his habitual residence or, if       1. Actions for infringement may be brought by the
he has no habitual residence in the Community, in             proprietor of a Community trade mark. A licensee
which he has a place of business. If neither the              may bring such actions only if the proprietor
defendant nor the plaintiff has his habitual residence        consents thereto.
or a place of business in the Community, the action
shall be heard by a court in the State in which the           2. A licensee shall, for the purpose of obtaining
headquarters of the Office is situated. The court             compensation for damage suffered by him, be
hearing the action shall have jurisdiction in respect of      entitled to intervene in an infringement action
acts of infringement alleged to have been committed           brought by the proprietor of the Community trade
in any Member State.                                          mark.
2. Actions for infringment of a Community trade
mark may also be heard by a court in the Member                                       Article178
State in which an act of infringement has been                 (Counterclaims for declaration of revocation or
committed. The court hearing the action shall have                                    invalidity]
jurisdiction only in respect of acts of infringement
alleged to have been committed in that State.                  1. The court which is hearing an action for
                                                              infringement of a Community trade mark shall have
3. If the court hearing the action finds that the             jurisdiction to give judgment on a counterclaim
Community trade mark has been infringed by use of              made by the original defendant for a declaration that
another Community trade mark it shall order that the          the rights of the proprietor are revoked or that the
latter shall not be used anywhere in the Community;            trade mark is invalid.
in any other case the order prohibiting the use of the
Community trade mark shall have effect only in the             2. No such counterclaim as aforesaid may be made
 Member State in which an act of infringement                  if an application or counterclaim relating to the same
 occurred.                                                     subject-matter and cause of action, and involving the
                                                               same parties, has been determined by the Office.
                        Article 75
                                                               3. Article 47, paragraphs 2 to 5 shall apply.
               [Supplementary provisions]
                                                               4. If the court declares that the rights of the
 Each Member State shall arrange that actions for              proprietor are revoked or that the Community trade
 infringement of Community trade marks which are               mark is invalid, it shall of its own motion order that
 brought at first instance shall be heard by a court           the trade mark be removed from the Register. When
 which has jurisdiction for the whole of that State or         the judgment has acquired the authority of a final
 for several jurisdictional districts therein.                 decision, the Office shall remove the trade mark from
 ---pagebreak--- No C 351/24                       Official Journal of the European Communities                             31. 12. 80
the Register upon application by whichever of the            2. The court which is hearing any action relating to
parties first requests it.                                   a Community trade mark may also, of its own motion
                                                             or on application by any of the parties, stay the
                       Article 79                            proceedings where an application for a declaration
                                                             that the rights of the proprietor of a Community trade
                 [Stay of proceedings]                       mark shall be revoked or that such trade mark is
                                                             invalid has been submitted to the Office.
1. The court which is hearing a counterclaim under
paragraph 1 of Article 78 for a declaration that the
rights of the proprietor of a Community trade mark                                   Article 80
are revoked or that the trade mark is invalid may, of
its own motion or on application by any of the                              [Defences as to the merits]
parties, stay the proceedings and invite the original
defendant to present to the Office, within such time         In proceedings concerning a Community trade mark,
as the court determines, an application for a                the fact that the proprietor's rights therein have been
declaration of revocation or for a declaration of            revoked or that the trade mark is invalid shall not be
invalidity.                                                  pleaded by way of defence as to the merits.
                                                      TITLE X
                             EFFECT ON THE LAWS OF THE MEMBER STATES
                       Section 1                                                     Section 3
     CUMULATIVE PROTECTION PROHIBITED                        CONVERSION INTO A NATIONAL TRADE MARK
                                                                                  APPLICATION
                       Article 81
 1. Where the proprietor of a Community trade                                        Article 83
mark is also the proprietor in a Member State of a
national trade mark which is identical with or similar         [Request for the application of national procedure]
to the Community trade mark and is for goods or              1. The central industrial property offices in the
services for which the Community trade mark is               Member States shall not apply the procedure for
registered, the effects of the national trade mark           registration of a national trade mark on the basis of a
shall, upon publication of the registration of the           Community trade mark application or Community
Community trade mark, be suspended for so long as            trade mark, save where the applicant or proprietor of
the Community trade mark produces its effects.               the trade mark so requests and the following
2. The proprietor of the Community trade mark                circumstances obtain:
shall however be entitled to claim that in the Member        (a) the Community trade mark application has been
State in which the national trade mark exists, or                 refused, withdrawn or deemed to have been
continues to be registered, his rights in the                     withdrawn;
Community trade mark are effective from the date on
which he acquired the national trade mark.                   (b) the Community trade mark ceases to have effect,
                                                                  but this provision shall not apply where the trade
3. In derogation from paragraph 1, the effects of                 mark has been removed from the Register
the national trade mark shall not revive if the                   following a declaration that the proprietor's
Community trade mark is removed from the Register                 rights are revoked on the ground of non-user.
following a declaration that the proprietor's rights
therein are revoked on the ground of non-user.               2. Paragraph 1 shall apply only in those Member
                                                             States where the Office or a national court has not
                      Section 2                              decided that grounds for refusal of registration or
                                                             grounds of invalidity exist under this Regulation in
PROHIBITION ON APPLICATION OF THE
NATIONAL LAWS OF THE MEMBER STATES TO                        connection with the Community trade mark
             COMMUNITY TRADE MARKS                           application or in connection with the Community
                                                             trade mark itself.
                       Article 82                            3. A request for      conversion shall be filed within
Without prejudice to Article 45, the national laws of        three months after    the application has been refused
the Member States shall not apply in relation to the         or withdrawn or       within three months after the
validity or use of Community trade marks.                    Community trade       mark ceases to have effect. An
 ---pagebreak---  31. 12. 80                        Official Journal of the European Communities                          No C 351/25
 application or proprietor who does not file within the       proprietor a copy of the file relating to the
 said period of three months shall lose the right to          Community trade mark application or Community
 claim priority for the national trade mark from the          trade mark.
 date of filing of the application or from the date of
 the Community trade mark.
                                                                                     Article 85
                                                                         [Communication and publication]
                        Article 84
                                                              1. The central industrial property offices in the
       [Submission of the request for conversion]             Member States shall inform the Office of all requests
                                                              for conversion which they receive.
 1. The Member States shall determine the
 conditions which are to apply to the submission of           2. Receipt of any such request shall be recorded in
 requests for conversion.                                    the Register of Community trade marks. If the
                                                              Community trade mark application has been
 2. The Office shall, if so requested, and provided          published, the request for conversion shall be
 the fee is paid, make available to the applicant or         published also.
                                                      TITLE XI
                          COMMUNITY GUARANTEE MARKS AND COMMUNITY
                                               COLLECTIVE MARKS
                       Article 86                                                    Article 89
             [Community guarantee marks]                                   [Rules relating to the mark]
 1. Community guarantee marks may consist of any              1. Applications for Community guarantee marks or
sign which is described as such when the guarantee           Community collective marks shall be accompanied
mark is applied for, if its purpose is to guarantee the      by regulations relating to them.
quality, method of manufacture or other common
characteristics of goods or services of different            2, The regulations governing a Community
undertakings which use the guarantee mark under the          guarantee mark shall set out the common
proprietor's control.                                        characteristics of the goods or services which the
                                                             mark is intended to guarantee and shall specify the
2. Community guarantee marks shall not be used in            detailed arrangements for real and effective
respect of goods or services produced or supplied by         supervision of the use of the mark, and suitable
the proprietor himself or by a person who is                 sanctions.
economically associated with him.
                                                                                     Article 90
                       Article 87                                             [Refusal of application]
             [Community collective marks)                    1. An application for a Community guarantee mark
Representative groups or bodies of manufacturers,            or Community collective mark shall be refused where
producers, suppliers of services, or traders may, if         the provisions of Articles 86, 87 or 89 are not
they have legal personality, apply for Community             satisfied, or where the regulations are contrary to
collective marks which are described as such in the          public policy or to accepted principles of morality.
application and are capable of distinguishing the
goods or services of their members from those of             2. An application for a Community guarantee mark
other undertakings.                                          shall also be refused if the public is liable to be misled
                                                             as regards the nature of the mark.
                       Article 88
               [Application of provisions)                                           Article 91
The provisions of this Regulation shall apply to             [Opposition of Community guarantee marks on
Community guarantee marks and to Community                                 absolute grounds for refusal]
collective marks, unless Articles 86 to 99 provide           1. Any natural or legal person and any group or
otherwise.                                                   body which has the capacity to be a party to
 ---pagebreak--- No C 351/26                        Official Journal of the European Communities                           31. 12. 80
proceedings in court, whether as plaintiff or                 4. Amendments to regulations shall not take effect
defendant, for the purpose of representing the                until they have been registered.
interests of manufacturers, producers, suppliers of
services, traders or consumers may, within a period                                  Article 95
of three months after publication of an application
for a Community guarantee mark, file opposition at            (Persons who are entitled to bring an action for
the Office, on any of the following grounds, against                               infringement]
registration of the mark:
                                                              1. The provisions of Article 77 concerning the rights
(a) that under Article 6 or 86 the mark is ineligible         of licensees shall apply to every person who has
      for registration;                                       authority to use a Community guarantee mark or
(b) that the regulations do not comply with the               Community collective mark.
      requirements of paragraph 2 of Article 89 or are
      contrary to public policy or to accepted                2. The proprietor of a Community guarantee mark
      principles of morality;                                 or Community collective mark shall also be entitled
                                                              to claim compensation for damage sustained by
(c) that the public is liable to be misled as regards         persons who have authority to use the mark, if the
      the nature of the mark.                                 damage arises in consequence of an unauthorized use
                                                              of the mark.
2. The opposition shall be expressed in writing and
shall specify the grounds on which it is based. It shall                             Article 96
not be treated as duly entered until the opposition fee
                                                                             [Grounds for revocation]
has been paid.
                        Article 92                            The rights of the proprietor of a Community
                                                              guarantee mark or of a Community collective mark
             [Observations by third parties]                  shall be revoked if:
Article 33 shall apply in the cases described in Article      (a) he uses the mark in a manner which is
90.                                                                inconsistent with the provisions of paragraph 2
                                                                   of Article 86, or
                        Article 93
                                                              (b) he authorizes or acquiesces in the use of the
                     {Use of marks]                                mark on terms which are different from those
                                                                   prescribed by this Regulation.
The use made of a Community guarantee mark or of
a Community collective mark by a person entitled to
use it shall be in conformity with the provisions of                                 Article 97
this Regulation and with the conditions which it                   (Grounds for and consequences of invalidity]
imposes as regards such use.
                                                               1. A Community guarantee mark or a Community
                                                              collective mark which is registered in breach of the
                        Article 94                            provisions of Article 90 shall be invalid. Such mark
                                                              shall also be invalid if an amendment to the
  (Amendment of the regulations governing the mark]           regulations governing it is registered in breach of
                                                              paragraph 2 of Article 94. The provisions of this
 1. The proprietor of a Community guarantee mark              Article shall not apply however if the proprietor of
 or of a Community collective mark shall inform the           the mark, by further amending the regulations,
 Office of any amendment to the regulations                   complies with the requirements of those Articles.
 governing it.
                                                              2. Where a Community guarantee mark or
 2. Amendments shall not be accepted if they are              Community collective mark is invalid in
 inconsistent whith the provisions of Article 89 or are       consequence of amendment of the regulations
 contrary to public policy or to accepted principles of       governing it, it shall be deemed not to have had the
 morality, or, where they relate to Community                 effects provided for in this Regulation from the time
 guarantee marks, are liable to mislead the public as         when the amendment was registered.
 regards the nature of the mark or the guarantees
 provided by the regulations.                                                        Article 98
 3. The Office shall publish the amendments to                [No applications to be made for registration of
 regulations governing Community guarantee marks               Community guarantee marks or Community collective
 or Community collective marks, or shall publish the           marks which have been removed from the Register, and
 fact that the regulations have been amended. Where                       such marks are not to be used]
 the amendments are published in full, Articles 91 and         1. Where a Community guarantee mark or a
 92 shall apply.                                               Community collective mark has not been renewed, or
 ---pagebreak---  31. 12. 80                         Official Journal of the European Communities                        No C 351/27
 the proprietor's rights therein have been revoked, or         renewal, revocation, surrender or declaration of
 the mark has been declared invalid or has been                invalidity.
 surrendered, no fresh application shall be made for           2. Without prejudice to the application of
 registration thereof and it shall not be used oh any          subparagraph (b) of paragraph 1 of Article 83,
 ground whatsoever for goods or services which are             paragraph 1 of this Article shall not apply to the
 similar to those in respect of which it was registered        former proprietor of the mark or to his successors in
 until three years have elapsed since the relevant non-        title thereto.
                                                          TITLE XII
                                      THE COMMUNITY TRADE MARKS OFFICE
                         Section 1                                                  Article 102
                 GENERAL PROVISIONS                                                  [Liability]
                                                               1. The contractual liability of the Office shall be
                         Article 99                           governed by the law applicable to the relevant
                       [Legal Status]                         contract.
 1. The Office is a body of the Community.                    2. The Court of Justice of the European
                                                              Communities shall have jurisdiction to give
 2. In each of the Member States the Office shall             judgment pursuant to any arbitration clause
enjoy the most extensive legal capacity accorded to           contained in a contract concluded by the Office.
 legal persons under their laws; it may, in particular,
acquire or dispose of movable and immovable                   3. As regards non-contractual liability, the Office
property and may be a party to legal proceedings.             shall, in accordance with the general principles
 For these purposes the Office shall be represented by        common to the laws of the Member States, make
its President.                                                good any damage caused by its departments or
                                                              servants in the performance of their duties.
3. The seat of the Office shall be located a t . . .
                                                              4. The Court of Justice shall have jurisdiction in
                                                              disputes relating to compensation for any such
                        Article 100                           damage as is referred to in paragraph 3.
                          (Staff)                             5. The personal liability of servants towards the
                                                              Office shall be governed by the provisions laid down
 1. The Staff Regulations of officials of the                 in its Staff Regulations or in the conditions of
European Communities, the conditions of                       employment applicable to its staff.
employment of other servants of the European
Communities, and the rules adopted jointly by the
Institutions of the European Communities for                                        Article 103
purposes of the application of those Staff                                          [Language]
Regulations and conditions of employment shall
apply to the staff of the Office, but without prejudice       The language of the Office for procedural purposes
to the application of Article 118 to the members of           is...
the Boards of Appeal.
2. Without prejudice to Article 105, the powers                                     Section 2
conferred on each Institution by the Staff                              ADMINISTRATION OF THE OFFICE
Regulations, and by the conditions of employment of
other servants, shall be exercised by the Office in
relation to its staff.                                                              Article 104
                                                                              [Powers of the President]
                        Article 101
                                                               1. The Office      shall be administered by the
               [Privileges aad imnunitiesl                    President.
The Protocol on the Privileges and Immunities of the          2. To this end the President shall have inter alia the
European Communities shall apply to the Office.               following functions and powers:
 ---pagebreak--- No C 351/28                       Official Journal of the European Communities                              31. 12. 80
(a) he shall take all necessary steps, including the                                 Section 3
      adoption of internal administrative instructions
      and the publication of notices to ensure the                          ADVISORY COMMITTEE
      functioning of the Office;
(b) he may, after consulting the Advisory                                           Article 107
      Committee, place before the Commission any                               (Creation and powers]
      proposal to amend this Regulation, the
      implementing Regulation, the rules of                  1. An advisory committee to the Office is hereby
      procedure of the Boards of Appeal, the fees            established and is hereinafter referred to as 'the
      regulations or the financial rules;                    Committee'.
(c) he shall draw up the estimates of revenues and           2. It shall settle the list of candidates provided for in
      expenditure of the Office and shall implement          Article 105.
      the budget;
                                                             3. It shall advise the President concerning matters
(d) he shall submit a management report to the               for which the Office is responsible.
      Commission and Advisory Committee each
      year;                                                  4. It shall be consulted in the cases provided for in
(e) he shall excercise the powers conferred by               this Regulation.
      paragraph 2 of Article 100;
                                                             5. It may deliver opinions to the Commission and
                                                             to the President where it considers that this is
3. The President shall be assisted by a number of            necessary.
Vice-Presidents. If the President is unable to act, one
of the Vice-Presidents shall act in place of him.                                   Article 108
                                                                                   (Composition]
                      Article 105                            1. The Committee shall be composed of one
            (Appointment of senior officials]                representative of the government of each Member
                                                             State and one representative of the Commission, and
1. The President of the Office shall be selected from        their alternates.
a list of three candidates which shall be prepared by        2. The members who represent the governments of
the Advisory Committee, and shall be appointed by            the Member States, and the alternates of those
the Commission. Power to dismiss the President shall         members, shall be appointed by the Council. The
lie with the Commission after consulting the                 member who represents the Commission, and his
Advisory Committee.                                          alternate, shall be appointed by the Commission.
2. The Vice-President of the Office and the                  3. The term of office of members and of their
members of the Boards of Appeal shall be appointed           alternates shall be three years. It shall be
or dismissed as in paragraph 1.                              renewable.
3. Without prejudice to paragraph 1 of Article 118,                                  Article 109
the Commission shall exercise disciplinary authority
over the employees referred to in paragraphs 1 and 2                                [Presidency]
of this Article.                                             The Committe shall elect a President and Vice-
                                                              President from among its members. If the President is
                                                             unable to act the Vice-President shall act in place of
                      Article 106                             him.
                  (Control of legality]                                             Article 110
 1. The Commission shall be responsible for legal                                    [Meetings]
supervision of the acts of the President.                     1. Meetings of the Committe shall be convened by
2. It shall require that any unlawful act of the             the President.
 President be altered or annulled.                            2. The President of the Office may take part in the
                                                             deliberations.
3. Any Member State, or any third party who is
directly and personally concerned, may refer to the           3. The Committee shall hold an ordinary meeting
Commission any act of the President, whether                  once a year; it shall also meet at the request of its
express or implied, so that the Commission will               President or of the Commission or of one third of its
examine the legality of that act.                             members.
 ---pagebreak--- 31. 12. 80                        Official Journal of the European Communities                       No C 351/29
4. It shall adopt rules of procedure.                       2. Decisions of the Opposition Division shall be
                                                            taken by three of its members, of whom two shall not
5. Its decisions shall be taken by simple majority          have taken part in examining the application. One of
vote. Where, however, the Committee has to take a           the deciding members must be qualified in law.
decision under paragraph 1 or 2 of Article 105 or
paragraph 1 of Article 121, a majority of not less than     3. Examination of the opposition may                be
three quarters of the votes shall be required.              conducted by one of those three members.
                       Article 111                                                Article US
                    [Duties of Office]                             (Administration of Trade Marks Division]
 The members of the Committee shall be bound, even           1. The Administration of Trade Marks Division
 after cessation of their appointment, not to disclose      shall be responsible for doing all such acts of the
 or make use of information which is of a confidential      Office in relation to Community trade marks as lie
 nature.                                                    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
                       Section 4                            from the Register of Community trade marks.
                                                            2. Decisions of the Administration of Trade Marks
         ARRANGEMENT OF DEPARTMENTS                         Division shall be taken by one of its members.
                      Article 112                                                 Article 116
        {Departments responsible for procedure]                              (Cancellation Division]
For the purposes of implementing the procedures              1. The Cancellation Division shall be responsible
laid down in this Regulation, there shall be                 for examining applications for revocation or for
established within the Office:                               declarations of invalidity of Community trade
(a)   an Examining Division;                                 marks.
(b)   an Opposition Division;                                2. Decisions of the Cancellation Division shall be
(c)   an Administration of Trade Marks Division;             taken by three members who are qualified in law.
(d)   a Cancellation Division;                               3. Examination of applications may be conducted
(e) Boards of Appeal.                                        by one of those three members.
                      Article 113                                                 Article 117
                  (Examining Division]                                         [Boards of Appeal]
 1. The Examining Division shall be responsible for          1. The Boards of Appeal shall be responsible for
examining Community trade mark applications and             examining appeals from decisions of the Examining
for deciding whether trade marks applied for are to          Division, Opposition Division,           Cancellation
be registered.                                               Division and Administration of Trade Marks
                                                             Division.
2. Decisions of the Examining Division shall be
taken by one of its members.                                2. Each Board of Appeal shall be composed of
                                                            three members who are qualified in law.
                      Article 114                                                 Article 118
                 (Opposition Division]                        [Independence of members of the Boards of Appeal]
 1. The Opposition Division shall be responsible for         1. The members of the Boards of Appeal shall be
deciding whether a trade mark is to be registered as a       appointed for a term of five years and may not be
Community trade mark in cases where observations             removed from office during that term, except where
are submitted or opposition is entered.                      there are serious grounds for removing them and the
 ---pagebreak--- No C 351/30                       Official Journal of the European Communities                              31. 12. 80
Court of Justice, having been seized by the                  and shall be shown in the Office's budget, and each
Commission decides that the member in question               financial year shall correspond with the calendar
shall be removed.                                            year.
2. The members of the Boards of Appeal shall be              2. The revenue and expenditure shown in the
independent. In making their decisions they shall not        budget shall be in balance.
be bound by any instructions they may have
received.                                                    3. Revenue means (without prejudice to other types
                                                             of income) total fees payable under the fees
3. The members of the Boards of Appeal shall not             regulations, and to the extent that it is necessary a
be members of the Examining Division, Opposition             subvention recorded under a specific heading of the
Division, Administration of Trade Marks Division or          Budget of the European Communities, Commission
Cancellation Division.                                       Section.
                      Article 119                                                   Article 121
               (Exclusion and objection)                                   [Preparation of the Budget]
1. Members of the Cancellation Division or of the            1. The President shall draw up each year an
Boards of Appeal shall not take part in determining          estimate of the Office's revenue and expenditure for
any matter in which they have a personal interest, or        the following year and shall send it to the
in which they have previously been involved as               Commission not later than 31 March in each year,
representatives of any of the parties, or in relation to     together with an establishment plan and an opinion
which they participated in taking the final decision in      from the Committee.
the course of the registration procedure. Members of         2. The Commission shall annex the estimate to the
the Boards of Appeal shall not take part in appeal           preliminary draft Budget of the European
proceedings if they participated in making the               Communities. The Commission may attach an
decision under appeal.                                       opinion on the estimate along with an alternative
2. If, for any of the reasons mentioned in                   estimate. If a subvention under paragraph 3 of
paragraph 1, or for any other reason, a member of            Article 120 is necessary, the Commission may
the Cancellation Division or of a Board of Appeal            propose such amendment of the estimate as it
considers that he should not take part in determining        considers requisite.
a matter, he shall inform the Division or Board
accordingly.                                                 3. The Office's budget shall be adopted by the
                                                             budget authority in accordance with the same
3. Members of the Cancellation Division or of a              procedure as the general budget.
Board of Appeal may be objected to by any party for
any of the reasons mentioned in parargraph 1, or if                                 Article 122
suspected of partiality. An objection shall not lie if,
while being aware of a reason for objecting the                                      (Control]
relevant party has taken any procedural steps. No             1. Not later than 31 March in each year the
objection shall be based upon the nationality of             President shall transmit to the Commission and to the
members.                                                     Audit Board accounts of the Office's total revenue
4. In the situations mentioned in paragraph 2 and 3          and expenditure for the preceding financial period.
the Cancellation Division and the Boards of Appeal           The Audit Board shall examine them in accordance
shall decide, without the participation of the member        with Article 206 a of the Treaty.
 concerned, as to the action to be taken. For the             2. The European Parliament shall give a discharge
 purposes of making the decision the member                   to the President of the Office in accordance with the
objected to shall be replaced in the Division or Board        procedure laid down in Article 206 c of the Treaty.
 of Appeal by his alternate.
                                                              3. Control of commitment and payment of all
                                                              expenditure and control of the existence and recovery
                       Section 5                              of all revenue of the Office shall be carried out by the
        BUDGET AND FINANCIAL CONTROL                          financial controller of the Commission.
                      Article 120                                                   Article 123
                        (Budget]                                               (Financial provisions]
 1. Estimates of all the Office's revenue and                 The financial regulation applicable to the general
expenditure shall be prepared for each financial year         budget of the European Communities shall apply to
 ---pagebreak--- 31. 12. 80                       Official Journal of the European Communities                                        No C 351/31
the Office without prejudice to the provisions              the amounts of the fees and the ways in which they
contained in this Regulation or to special provisions        are to be paid,
determined by regulations adopted by the Council in
accordance with the conditions laid down in                  2. The amounts of the fees shall be fixed in such
Article 209 of the Treaty.                                   manner that the Office's revenue covers its
                                                             expenditure.
                     Article 124                             3. The fees regulations shall be adopted on a
                                                             proposal from the Commission by qualified majority
                  [Fees regulations]                        v o t e o f t h e C o u n c i l a f t e r obtaining the opinion of the
1. The fees regulations shall determine in particular        European Parliament.
                                                    TITLE XIII
                                              FINAL PROVISIONS
                                                  Article 125
                                     [Community implementing provisions!
                             1. The rules implementing this Regulation,
                            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.
                                                  Article 126
                                      [National implementing provisions]
                            The Member States shall within twelve months
                            following the 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
                            Save as regards Articles 75 and 84, this Regulation
                            shall enter into force twelve 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.