Article 81 
Restitutio in integrum 1. The applicant for or proprietor of a Community trade mark or any other party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to comply with a time limit vis-à-vis the Office shall, upon application, have his rights re-established if the obstacle to compliance has the direct consequence, by virtue of the provisions of this Regulation, of causing the loss of any right or means of redress. 2. The application must be filed in writing within two months from the removal of the obstacle to compliance with the time limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the unobserved time limit. In the case of non-submission of the request for renewal of registration or of non-payment of a renewal fee, the further period of six months provided in Article 47(3), third sentence, shall be deducted from the period of one year. 3. The application must state the grounds on which it is based and must set out the facts on which it relies. It shall not be deemed to be filed until the fee for re-establishment of rights has been paid. 4. The department competent to decide on the omitted act shall decide upon the application. 5. This Article shall not be applicable to the time limits referred to in paragraph 2 of this Article, Article 41(1) and (3) and Article 82. 6. Where the applicant for or proprietor of a Community trade mark has his rights re-established, he may not invoke his rights vis-à-vis a third party who, in good faith, has put goods on the market or supplied services under a sign which is identical with, or similar to, the Community trade mark in the course of the period between the loss of rights in the application or in the Community trade mark and publication of the mention of re-establishment of those rights. 7. A third party who may avail himself of the provisions of paragraph 6 may bring third party proceedings against the decision re-establishing the rights of the applicant for or proprietor of a Community trade mark within a period of two months as from the date of publication of the mention of re-establishment of those rights. 8. Nothing in this Article shall limit the right of a Member State to grant restitutio in integrum in respect of time limits provided for in this Regulation and to be observed vis-à-vis the authorities of such State.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 81 Restitutio in integrum):
1. The applicant for or proprietor of an EU trade mark or any other party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to comply with a time limit vis-à-vis the Office shall, upon application, have his rights re-established if the obstacle to compliance has the direct consequence, by virtue of the provisions of this Regulation, of causing the loss of any right or means of redress. 2. The application must be filed in writing within two months from the removal of the obstacle to compliance with the time limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the unobserved time limit. In the case of non-submission of the request for renewal of registration or of non-payment of a renewal fee, the further period of six months provided in Article 47(3), third sentence, shall be deducted from the period of one year. 3. The application must state the grounds on which it is based and must set out the facts on which it relies. It shall not be deemed to be filed until the fee for re-establishment of rights has been paid. 4. The department competent to decide on the omitted act shall decide upon the application. 5. This Article shall not be applicable to the time limits referred to in paragraph 2 of this Article, Article 41(1) and (3) and Article 82. 6. Where the applicant for or proprietor of an EU trade mark has his rights re-established, he may not invoke his rights vis-à-vis a third party who, in good faith, has put goods on the market or supplied services under a sign which is identical with, or similar to, the EU trade mark in the course of the period between the loss of rights in the application or in the EU trade mark and publication of the mention of re-establishment of those rights. 7. A third party who may avail himself of the provisions of paragraph 6 may bring third party proceedings against the decision re-establishing the rights of the applicant for or proprietor of an EU trade mark within a period of two months as from the date of publication of the mention of re-establishment of those rights. 8. Nothing in this Article shall limit the right of a Member State to grant restitutio in integrum in respect of time limits provided for in this Regulation and to be observed vis-à-vis the authorities of such State.
Article 82 
Continuation of proceedings 1. An applicant for or proprietor of a Community trade mark or any other party to proceedings before the Office who has omitted to observe a time limit vis-à-vis the Office may, upon request, obtain the continuation of proceedings, provided that at the time the request is made the omitted act has been carried out. The request for continuation of proceedings shall be admissible only if it is presented within two months following the expiry of the unobserved time limit. The request shall not be deemed to have been filed until the fee for continuation of the proceedings has been paid. 2. This Article shall not be applicable to the time limits laid down in Article 25(3), Article 27, Article 29(1), Article 33(1), Article 36(2), Article 41, Article 42, Article 47(3), Article 60, Article 62, Article 65(5), Article 81, Article 112, or to the time limits laid down in this Article or the time limits laid down by the Implementing Regulation for claiming, after the application has been filed, priority within the meaning of Article 30, exhibition priority within the meaning of Article 33 or seniority within the meaning of Article 34. 3. The department competent to decide on the omitted act shall decide upon the application. 4. If the Office accepts the application, the consequences of having failed to observe the time limit shall be deemed not to have occurred. 5. If the Office rejects the application, the fee shall be refunded.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 82 Continuation of proceedings):
1. An applicant for or proprietor of an EU trade mark or any other party to proceedings before the Office who has omitted to observe a time limit vis-à-vis the Office may, upon request, obtain the continuation of proceedings, provided that at the time the request is made the omitted act has been carried out. The request for continuation of proceedings shall be admissible only if it is presented within two months following the expiry of the unobserved time limit. The request shall not be deemed to have been filed until the fee for continuation of the proceedings has been paid. 2. This Article shall not be applicable to the time limits laid down in Article 25(3), Article 27, Article 29(1), Article 33(1), Article 36(2), Article 41, Article 42, Article 47(3), Article 60, Article 62, Article 65(5), Article 81, Article 112, or to the time limits laid down in this Article or the time limits laid down by the Implementing Regulation for claiming, after the application has been filed, priority within the meaning of Article 30, exhibition priority within the meaning of Article 33 or seniority within the meaning of Article 34. 3. The department competent to decide on the omitted act shall decide upon the application. 4. If the Office accepts the application, the consequences of having failed to observe the time limit shall be deemed not to have occurred. If a decision has been taken between the expiry of that time limit and the request for the continuation of proceedings, the department competent to decide on the omitted act shall review the decision and, where completion of the omitted act itself is sufficient, take a different decision. If, following the review, the Office concludes that the original decision does not require to be altered, it shall confirm that decision in writing. 5. If the Office rejects the application, the fee shall be refunded.
Article 83 
Reference to general principles In the absence of procedural provisions in this Regulation, the Implementing Regulation, the fees regulations or the rules of procedure of the Boards of Appeal, the Office shall take into account the principles of procedural law generally recognised in the Member States.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 83 Reference to general principles):
In the absence of procedural provisions in this Regulation, the Implementing Regulation, the fees regulations or the rules of procedure of the Boards of Appeal, the Office shall take into account the principles of procedural law generally recognised in the Member States.
Article 84 
Termination of financial obligations 1. Rights of the Office to the payment of a fee shall be extinguished after four years from the end of the calendar year in which the fee fell due. 2. Rights against the Office for the refunding of fees or sums of money paid in excess of a fee shall be extinguished after four years from the end of the calendar year in which the right arose. 3. The period laid down in paragraphs 1 and 2 shall be interrupted, in the case covered by paragraph 1, by a request for payment of the fee, and in the case covered by paragraph 2, by a reasoned claim in writing. On interruption it shall begin again immediately and shall end at the latest six years after the end of the year in which it originally began, unless, in the meantime, judicial proceedings to enforce the right have begun; in this case the period shall end at the earliest one year after the judgment has acquired the authority of a final decision.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 84 Termination of financial obligations):
1. Rights of the Office to the payment of a fee shall be extinguished after four years from the end of the calendar year in which the fee fell due. 2. Rights against the Office for the refunding of fees or sums of money paid in excess of a fee shall be extinguished after four years from the end of the calendar year in which the right arose. 3. The period laid down in paragraphs 1 and 2 shall be interrupted, in the case covered by paragraph 1, by a request for payment of the fee, and in the case covered by paragraph 2, by a reasoned claim in writing. On interruption it shall begin again immediately and shall end at the latest six years after the end of the year in which it originally began, unless, in the meantime, judicial proceedings to enforce the right have begun; in this case the period shall end at the earliest one year after the judgment has acquired the authority of a final decision.
Article 85 
Costs 1. The losing party in opposition proceedings, proceedings for revocation, proceedings for a declaration of invalidity or appeal proceedings shall bear the fees incurred by the other party as well as all costs, without prejudice to Article 119(6), incurred by him essential to the proceedings, including travel and subsistence and the remuneration of an agent, adviser or advocate, within the limits of the scales set for each category of costs under the conditions laid down in the Implementing Regulation. 2. However, where each party succeeds on some and fails on other heads, or if reasons of equity so dictate, the Opposition Division, Cancellation Division or Board of Appeal shall decide a different apportionment of costs. 3. The party who terminates the proceedings by withdrawing the Community trade mark application, the opposition, the application for revocation of rights, the application for a declaration of invalidity or the appeal, or by not renewing registration of the Community trade mark or by surrendering the Community trade mark, shall bear the fees and the costs incurred by the other party as stipulated in paragraphs 1 and 2. 4. Where a case does not proceed to judgment the costs shall be at the discretion of the Opposition Division, Cancellation Division or Board of Appeal. 5. Where the parties conclude before the Opposition Division, Cancellation Division or Board of Appeal a settlement of costs differing from that provided for in the preceding paragraphs, the department concerned shall take note of that agreement. 6. The Opposition Division or Cancellation Division or Board of Appeal shall fix the amount of the costs to be paid pursuant to the preceding paragraphs when the costs to be paid are limited to the fees paid to the Office and the representation costs. In all other cases, the registry of the Board of Appeal or a member of the staff of the Opposition Division or Cancellation Division shall fix the amount of the costs to be reimbursed on request. The request is admissible only within two months of the date on which the decision for which an application was made for the costs to be fixed became final. The amount so determined may be reviewed by a decision of the Opposition Division or Cancellation Division or Board of Appeal on a request filed within the prescribed period.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 85 Costs):
1. The losing party in opposition proceedings, proceedings for revocation, proceedings for a declaration of invalidity or appeal proceedings shall bear the fees incurred by the other party as well as all costs, without prejudice to Article 119(6), incurred by him essential to the proceedings, including travel and subsistence and the remuneration of an agent, adviser or advocate, within the limits of the scales set for each category of costs under the conditions laid down in the Implementing Regulation. 1a. The Commission shall adopt implementing acts specifying the maximum rates for costs essential to the proceedings and actually incurred by the successful party. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2). When specifying such amounts with respect to travel and subsistence costs, the Commission shall take into account the distance between the place of residence or business of the party, representative or witness or expert and the place where the oral proceedings are held, the procedural stage at which the costs have been incurred, and, as far as costs of representation within the meaning of Article 93(1) are concerned, the need to ensure that the obligation to bear the costs may not be misused for tactical reasons by the other party. Subsistence expenses shall be calculated in accordance with the Staff Regulations of Officials of the Union and the Conditions of Employment of Other Servants of the Union, laid down in Council Regulation (EEC, Euratom, ECSC) No 259/68 ( 6 ). The losing party shall bear the costs for one opposing party only and, where applicable, one representative only. 2. However, where each party succeeds on some and fails on other heads, or if reasons of equity so dictate, the Opposition Division, Cancellation Division or Board of Appeal shall decide a different apportionment of costs. 3. The party who terminates the proceedings by withdrawing the EU trade mark application, the opposition, the application for revocation of rights, the application for a declaration of invalidity or the appeal, or by not renewing registration of the EU trade mark or by surrendering the EU trade mark , shall bear the fees and the costs incurred by the other party as stipulated in paragraphs 1 and 2. 4. Where a case does not proceed to judgment the costs shall be at the discretion of the Opposition Division, Cancellation Division or Board of Appeal. 5. Where the parties conclude before the Opposition Division, Cancellation Division or Board of Appeal a settlement of costs differing from that provided for in the preceding paragraphs, the department concerned shall take note of that agreement. 6. The Opposition Division or Cancellation Division or Board of Appeal shall fix the amount of the costs to be paid pursuant to the preceding paragraphs when the costs to be paid are limited to the fees paid to the Office and the representation costs. In all other cases, the registry of the Board of Appeal or a member of the staff of the Opposition Division or Cancellation Division shall fix the amount of the costs to be reimbursed on request. The request is admissible only within two months of the date on which the decision for which an application was made for the costs to be fixed became final. The amount so determined may be reviewed by a decision of the Opposition Division or Cancellation Division or Board of Appeal on a request filed within the prescribed period.
Article 86 
Enforcement of decisions fixing the amount of costs 1. Any final decision of the Office fixing the amount of costs shall be enforceable. 2. Enforcement shall be governed by the rules of civil procedure in force in the State in the territory of which it is carried out. The order for its enforcement shall be appended to the decision, without other formality than verification of the authenticity of the decision, by the national authority which the Government of each Member State shall designate for this purpose and shall make known to the Office and to the Court of Justice. 3. When these formalities have been completed on application by the party concerned, the latter may proceed to enforcement in accordance with the national law, by bringing the matter directly before the competent authority. 4. Enforcement may be suspended only by a decision of the Court of Justice. However, the courts of the country concerned shall have jurisdiction over complaints that enforcement is being carried out in an irregular manner.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 86 Enforcement of decisions fixing the amount of costs):
1. Any final decision of the Office fixing the amount of costs shall be enforceable. 2. Enforcement shall be governed by the rules of civil procedure in force in the State in the territory of which it is carried out. Each Member State shall designate a single authority responsible for verifying the authenticity of the decision referred to in paragraph 1 and shall communicate its contact details to the Office, the Court of Justice and the Commission. The order for the enforcement of the decision shall be appended to the decision by that authority, with the verification of the authenticity of the decision as the sole formality. 3. When these formalities have been completed on application by the party concerned, the latter may proceed to enforcement in accordance with the national law, by bringing the matter directly before the competent authority. 4. Enforcement may be suspended only by a decision of the Court of Justice. However, the courts of the country concerned shall have jurisdiction over complaints that enforcement is being carried out in an irregular manner.
Article 87 
Register of Community trade marks The Office shall keep a register to be known as the Register of Community trade marks, which shall contain those particulars the registration or inclusion of which is provided for by this Regulation or by the Implementing Regulation. The Register shall be open to public inspection.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Article 88 
Inspection of files 1. The files relating to Community trade mark applications which have not yet been published shall not be made available for inspection without the consent of the applicant. 2. Any person who can prove that the applicant for a Community trade mark has stated that after the trade mark has been registered he will invoke the rights under it against him may obtain inspection of the files prior to the publication of that application and without the consent of the applicant. 3. Subsequent to the publication of the Community trade mark application, the files relating to such application and the resulting trade mark may be inspected on request. 4. However, where the files are inspected pursuant to paragraphs 2 or 3, certain documents in the file may be withheld from inspection in accordance with the provisions of the Implementing Regulation.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 88 Inspection of files):
1. The files relating to EU trade mark applications which have not yet been published shall not be made available for inspection without the consent of the applicant. 2. Any person who can prove that the applicant for an EU trade mark has stated that after the trade mark has been registered he will invoke the rights under it against him may obtain inspection of the files prior to the publication of that application and without the consent of the applicant. 3. Subsequent to the publication of the EU trade mark application, the files relating to such application and the resulting trade mark may be inspected on request. 4. Where the files are inspected pursuant to paragraph 2 or 3 of this Article, documents relating to exclusion or objection pursuant to Article 137, draft decisions and opinions, and all other internal documents used for the preparation of decisions and opinions, as well as parts of the file which the party concerned showed a special interest in keeping confidential before the request for inspection of the files was made, unless inspection of such parts of the file is justified by overriding, legitimate interests of the party seeking inspection, may be withheld from inspection. 5. Inspection of the files of EU trade mark applications and of registered EU trade marks shall be of the original document, or of copies thereof, or of technical means of storage if the files are stored in this way. The Executive Director shall determine the means of inspection. 6. Where inspection of files takes place as provided for in paragraph 7, the request for inspection of the files shall not be deemed to have been made until the required fee has been paid. No fee shall be payable if inspection of technical means of storage takes place online. 7. Inspection of the files shall take place at the premises of the Office. On request, inspection of the files shall be effected by means of issuing copies of file documents. The issuing of such copies shall be conditional on the payment of a fee. The Office shall also issue on request certified or uncertified copies of the application for an EU trade mark upon payment of a fee. 8. The files kept by the Office relating to international registrations designating the Union may be inspected on request as from the date of publication referred to in Article 152(1), in accordance with the conditions laid down in paragraphs 1, 3 and 4 of this Article. 9. Subject to the restrictions provided for in paragraph 4, the Office may, on request, communicate information from any file of an EU trade mark applied for or of a registered EU trade mark, subject to payment of a fee. However, the Office may require the exercise of the option to obtain inspection of the file itself should it deem this to be appropriate in view of the quantity of information to be supplied.
Article 89 
Periodical publications The Office shall periodically publish: (a) a Community Trade Marks Bulletin containing entries made in the Register of Community trade marks as well as other particulars the publication of which is prescribed by this Regulation or by the Implementing Regulation; (b) an Official Journal containing notices and information of a general character issued by the President of the Office, as well as any other information relevant to this Regulation or its implementation.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 89 Periodical publications):
4. The Commission shall adopt implementing acts specifying: (a) the date to be taken as the date of publication in the European Union Trade Marks Bulletin; (b) the manner of publication of entries regarding the registration of a trade mark which do not contain changes as compared to the publication of the application; (c) the forms in which editions of the Official Journal of the Office may be made available to the public. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).
Article 90 
Administrative cooperation Unless otherwise provided in this Regulation or in national laws, the Office and the courts or authorities of the Member States shall on request give assistance to each other by communicating information or opening files for inspection. Where the Office lays files open to inspection by courts, Public Prosecutors' Offices or central industrial property offices, the inspection shall not be subject to the restrictions laid down in Article 88.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 90 Administrative cooperation):
1. less otherwise provided in this Regulation or in national laws, the Office and the courts or authorities of the Member States shall on request give assistance to each other by communicating information or opening files for inspection. Where the Office lays files open to inspection by courts, Public Prosecutors' Offices or central industrial property offices, the inspection shall not be subject to the restrictions laid down in Article 88. 2. The Office shall not charge fees for the communication of information or the opening of files for inspection. 3. The Commission shall adopt implementing acts specifying the detailed arrangements as to how the Office and the authorities of the Member States are to exchange information between each other and open files for inspection, taking into account the restrictions to which the inspection of files relating to EU trade mark applications or registrations is subject, pursuant to Article 88, when it is opened to third parties. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).
Article 91 
Exchange of publications 1. The Office and the central industrial property offices of the Member States shall despatch to each other on request and for their own use one or more copies of their respective publications free of charge. 2. The Office may conclude agreements relating to the exchange or supply of publications.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 91 Exchange of publications):
1. The Office and the central industrial property offices of the Member States shall despatch to each other on request and for their own use one or more copies of their respective publications free of charge. 2. The Office may conclude agreements relating to the exchange or supply of publications.
Article 92 
General principles of representation 1. Subject to the provisions of paragraph 2, no person shall be compelled to be represented before the Office. 2. Without prejudice to paragraph 3, second sentence, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the Community must be represented before the Office in accordance with Article 93(1) in all proceedings established by this Regulation, other than in filing an application for a Community trade mark; the Implementing Regulation may permit other exceptions. 3. Natural or legal persons having their domicile or principal place of business or a real and effective industrial or commercial establishment in the Community may be represented before the Office by an employee. An employee of a legal person to which this paragraph applies may also represent other legal persons which have economic connections with the first legal person, even if those other legal persons have neither their domicile nor their principal place of business nor a real and effective industrial or commercial establishment within the Community. 4. The Implementing Regulation shall specify whether and under what conditions an employee must file with the Office a signed authorisation for insertion on the file.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 92 General principles of representation):
1. Subject to the provisions of paragraph 2, no person shall be compelled to be represented before the Office. 2. Without prejudice to the second sentence of paragraph 3 of this Article, natural or legal persons having neither their domicile nor their principal place of business or a real and effective industrial or commercial establishment in the European Economic Area shall be represented before the Office in accordance with Article 93(1) in all proceedings provided for by this Regulation, other than the filing of an application for an EU trade mark. 3. Natural or legal persons having their domicile or principal place of business or a real and effective industrial or commercial establishment in the European Economic Area may be represented before the Office by an employee. An employee of a legal person to which this paragraph applies may also represent other legal persons which have economic connections with the first legal person, even if those other legal persons have neither their domicile nor their principal place of business nor a real and effective industrial or commercial establishment within the European Economic Area. Employees who represent persons, within the meaning of this paragraph, shall, at the request of the Office or, where appropriate, of the party to the proceedings, file with it a signed authorisation for insertion in the files. 4. Where there is more than one applicant or more than one third party acting in common, a common representative shall be appointed.
Article 93 
Professional representatives 1. Representation of natural or legal persons before the Office may only be undertaken by: (a) any legal practitioner qualified in one of the Member States and having his place of business within the Community, to the extent that he is entitled, within the said State, to act as a representative in trade mark matters; (b) professional representatives whose names appear on the list maintained for this purpose by the Office. The Implementing Regulation shall specify whether and under what conditions the representatives before the Office must file with the Office a signed authorisation for insertion on the file. Representatives acting before the Office must file with it a signed authorisation for insertion on the files, the details of which are set out in the Implementing Regulation. 2. Any natural person who fulfils the following conditions may be entered on the list of professional representatives: (a) he must be a national of one of the Member States; (b) he must have his place of business or employment in the Community; (c) he must be entitled to represent natural or legal persons in trade mark matters before the central industrial property office of a Member State. Where, in that State, the entitlement is not conditional upon the requirement of special professional qualifications, persons applying to be entered on the list who act in trade mark matters before the central industrial property office of the said State must have habitually so acted for at least five years. However, persons whose professional qualification to represent natural or legal persons in trade mark matters before the central industrial property office of one of the Member States is officially recognised in accordance with the regulations laid down by such State shall not be subject to the condition of having exercised the profession. 3. Entry shall be effected upon request, accompanied by a certificate furnished by the central industrial property office of the Member State concerned, which must indicate that the conditions laid down in paragraph 2 are fulfilled. 4. The President of the Office may grant exemption from: (a) the requirement of paragraph 2(c), second sentence, if the applicant furnishes proof that he has acquired the requisite qualification in another way; (b) the requirement of paragraph 2(a) in special circumstances. 5. The conditions under which a person may be removed from the list of professional representatives shall be laid down in the Implementing Regulation.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 93 Professional representatives):
1. Representation of natural or legal persons before the Office may only be undertaken by: (a) a legal practitioner qualified in one of the Member States of the European Economic Area and having his place of business within the European Economic Area, to the extent that he is entitled, within the said Member State, to act as a representative in trade mark matters; (b) professional representatives whose names appear on the list maintained for this purpose by the Office. Representatives acting before the Office shall, at the request of the Office or, where appropriate, of the other party to the proceedings, file with it a signed authorisation for insertion on the files. 2. Any natural person who fulfils the following conditions may be entered on the list of professional representatives: (a) being a national of one of the Member States of the European Economic Area; (b) having his place of business or employment in the European Economic Area; (c) being entitled to represent natural or legal persons in trade mark matters before the Benelux Office for Intellectual Property or before the central industrial property office of a Member State of the European Economic Area. Where, in the State concerned, the entitlement is not conditional upon the requirement of special professional qualifications, persons applying to be entered on the list who act in trade mark matters before the Benelux Office for Intellectual Property or those central industrial property offices shall have habitually so acted for at least five years. However, persons whose professional qualification to represent natural or legal persons in trade mark matters before the Benelux Office for Intellectual Property or those central industrial property offices is officially recognised in accordance with the regulations laid down by the State concerned shall not be required to have exercised the profession. 3. Entry shall be effected upon request, accompanied by a certificate furnished by the central industrial property office of the Member State concerned, which must indicate that the conditions laid down in paragraph 2 are fulfilled. 4. The Executive Director may grant an exemption from: (a) the requirement in the second sentence of paragraph 2(c), if the applicant furnishes proof that he has acquired the requisite qualification in another way; (b) the requirement set out in paragraph 2(a) in the case of highly qualified professionals, provided that the requirements set out in paragraphs 2(b) and (c) are fulfilled. 5. A person may be removed from the list of professional representatives at his request or when no longer in a capacity to represent. The amendments of the list of professional representatives shall be published in the Official Journal of the Office.
Article 94 
Application of Regulation (EC) No 44/2001 1. Unless otherwise specified in this Regulation, Regulation (EC) No 44/2001 shall apply to proceedings relating to Community trade marks and applications for Community trade marks, as well as to proceedings relating to simultaneous and successive actions on the basis of Community trade marks and national trade marks. 2. In the case of proceedings in respect of the actions and claims referred to in Article 96: (a) Articles 2 and 4, points 1, 3, 4 and 5 of Article 5 and Article 31 of Regulation (EC) No 44/2001 shall not apply; (b) Articles 23 and 24 of Regulation (EC) No 44/2001 shall apply subject to the limitations in Article 97(4) of this Regulation; (c) the provisions of Chapter II of Regulation (EC) No 44/2001 which are applicable to persons domiciled in a Member State shall also be applicable to persons who do not have a domicile in any Member State but have an establishment therein.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 94 Application of Union rules on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters):
1. Unless otherwise specified in this Regulation, the Union rules on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters shall apply to proceedings relating to EU trade marks and applications for EU trade marks , as well as to proceedings relating to simultaneous and successive actions on the basis of EU trade marks and national trade marks. 2. In the case of proceedings in respect of the actions and claims referred to in Article 96: (a) Articles 2 and 4, points 1, 3, 4 and 5 of Article 5 and Article 31 of Regulation (EC) No 44/2001 shall not apply; (b) Articles 23 and 24 of Regulation (EC) No 44/2001 shall apply subject to the limitations in Article 97(4) of this Regulation; (c) the provisions of Chapter II of Regulation (EC) No 44/2001 which are applicable to persons domiciled in a Member State shall also be applicable to persons who do not have a domicile in any Member State but have an establishment therein. 3. References in this Regulation to Regulation (EC) No 44/2001 shall include, where appropriate, the Agreement between the European Community and the Kingdom of Denmark on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters done on 19 October 2005.
Article 95 
Community trade mark courts 1. The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance, hereinafter referred to as ‘Community trade mark courts’, which shall perform the functions assigned to them by this Regulation. 2. Each Member State shall communicate to the Commission within three years of the entry into force of Regulation (EC) No 40/94 a list of Community trade mark courts indicating their names and their territorial jurisdiction. 3. Any change made after communication of the list referred to in paragraph 2 in the number, names or territorial jurisdiction of the courts shall be notified without delay by the Member State concerned to the Commission. 4. The information referred to in paragraphs 2 and 3 shall be notified by the Commission to the Member States and published in the Official Journal of the European Union . 5. As long as a Member State has not communicated the list as stipulated in paragraph 2, jurisdiction for any proceedings resulting from an action or application covered by Article 96, and for which the courts of that State have jurisdiction under Article 97, shall lie with that court of the State in question which would have jurisdiction ratione loci and ratione materiae in the case of proceedings relating to a national trade mark registered in that State.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 95 EU trade mark courts):
1. The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance, hereinafter referred to as ‘ EU trade mark courts ’, which shall perform the functions assigned to them by this Regulation. 2. Each Member State shall communicate to the Commission within three years of the entry into force of Regulation (EC) No 40/94 a list of EU trade mark courts indicating their names and their territorial jurisdiction. 3. Any change made after communication of the list referred to in paragraph 2 in the number, names or territorial jurisdiction of the courts shall be notified without delay by the Member State concerned to the Commission. 4. The information referred to in paragraphs 2 and 3 shall be notified by the Commission to the Member States and published in the Official Journal of the European Union . 5. As long as a Member State has not communicated the list as stipulated in paragraph 2, jurisdiction for any proceedings resulting from an action or application covered by Article 96, and for which the courts of that State have jurisdiction under Article 97, shall lie with that court of the State in question which would have jurisdiction ratione loci and ratione materiae in the case of proceedings relating to a national trade mark registered in that State.
Article 96 
Jurisdiction over infringement and validity The Community trade mark courts shall have exclusive jurisdiction: (a) for all infringement actions and — if they are permitted under national law — actions in respect of threatened infringement relating to Community trade marks; (b) for actions for declaration of non-infringement, if they are permitted under national law; (c) for all actions brought as a result of acts referred to in Article 9(3), second sentence; (d) for counterclaims for revocation or for a declaration of invalidity of the Community trade mark pursuant to Article 100.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 96 Jurisdiction over infringement and validity):
The EU trade mark courts shall have exclusive jurisdiction: (a) for all infringement actions and — if they are permitted under national law — actions in respect of threatened infringement relating to EU trade marks ; (b) for actions for declaration of non-infringement, if they are permitted under national law; (c) for all actions brought as a result of acts referred to in Article 9b(2) ; (d) for counterclaims for revocation or for a declaration of invalidity of the EU trade mark pursuant to Article 100.
Article 97 
International jurisdiction 1. Subject to the provisions of this Regulation as well as to any provisions of Regulation (EC) No 44/2001 applicable by virtue of Article 94, proceedings in respect of the actions and claims referred to in Article 96 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment. 2. If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment. 3. If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such proceedings shall be brought in the courts of the Member State where the Office has its seat. 4. Notwithstanding the provisions of paragraphs 1, 2 and 3: (a) Article 23 of Regulation (EC) No 44/2001 shall apply if the parties agree that a different Community trade mark court shall have jurisdiction; (b) Article 24 of Regulation (EC) No 44/2001 shall apply if the defendant enters an appearance before a different Community trade mark court. 5. Proceedings in respect of the actions and claims referred to in Article 96, with the exception of actions for a declaration of non-infringement of a Community trade mark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened, or in which an act within the meaning of Article 9(3), second sentence, has been committed.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 97 International jurisdiction):
1. Subject to the provisions of this Regulation as well as to any provisions of Regulation (EC) No 44/2001 applicable by virtue of Article 94, proceedings in respect of the actions and claims referred to in Article 96 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment. 2. If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment. 3. If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such proceedings shall be brought in the courts of the Member State where the Office has its seat. 4. Notwithstanding the provisions of paragraphs 1, 2 and 3: (a) Article 23 of Regulation (EC) No 44/2001 shall apply if the parties agree that a different EU trade mark court shall have jurisdiction; (b) Article 24 of Regulation (EC) No 44/2001 shall apply if the defendant enters an appearance before a different EU trade mark court . 5. Proceedings in respect of the actions and claims referred to in Article 96, with the exception of actions for a declaration of non-infringement of an EU trade mark , may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened, or in which an act within the meaning of Article 9(3), second sentence, has been committed.
Article 98 
Extent of jurisdiction 1. A Community trade mark court whose jurisdiction is based on Article 97(1) to (4) shall have jurisdiction in respect of: (a) acts of infringement committed or threatened within the territory of any of the Member States; (b) acts within the meaning of Article 9(3), second sentence, committed within the territory of any of the Member States. 2. A Community trade mark court whose jurisdiction is based on Article 97(5) shall have jurisdiction only in respect of acts committed or threatened within the territory of the Member State in which that court is situated.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 98 Extent of jurisdiction):
1. An EU trade mark court whose jurisdiction is based on Article 97(1) to (4) shall have jurisdiction in respect of: (a) acts of infringement committed or threatened within the territory of any of the Member States; (b) acts within the meaning of Article 9(3), second sentence, committed within the territory of any of the Member States. 2. An EU trade mark court whose jurisdiction is based on Article 97(5) shall have jurisdiction only in respect of acts committed or threatened within the territory of the Member State in which that court is situated.
Article 99 
Presumption of validity — Defence as to the merits 1. The Community trade mark courts shall treat the Community trade mark as valid unless its validity is put in issue by the defendant with a counterclaim for revocation or for a declaration of invalidity. 2. The validity of a Community trade mark may not be put in issue in an action for a declaration of non-infringement. 3. In the actions referred to in Article 96(a) and (c) a plea relating to revocation or invalidity of the Community trade mark submitted otherwise than by way of a counterclaim shall be admissible in so far as the defendant claims that the rights of the proprietor of the Community trade mark could be revoked for lack of use or that the Community trade mark could be declared invalid on account of an earlier right of the defendant.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 99 Presumption of validity — Defence as to the merits):
1. The EU trade mark courts shall treat the EU trade mark as valid unless its validity is put in issue by the defendant with a counterclaim for revocation or for a declaration of invalidity. 2. The validity of an EU trade mark may not be put in issue in an action for a declaration of non-infringement. 3. In the actions referred to in points (a) and (c) of Article 96, a plea relating to revocation of the EU trade mark submitted otherwise than by way of a counterclaim shall be admissible where the defendant claims that the EU trade mark could be revoked for lack of genuine use at the time the infringement action was brought.
Article 100 
Counterclaims 1. A counterclaim for revocation or for a declaration of invalidity may only be based on the grounds for revocation or invalidity mentioned in this Regulation. 2. A Community trade mark court shall reject a counterclaim for revocation or for a declaration of invalidity if a decision taken by the Office relating to the same subject matter and cause of action and involving the same parties has already become final. 3. If the counterclaim is brought in a legal action to which the proprietor of the trade mark is not already a party, he shall be informed thereof and may be joined as a party to the action in accordance with the conditions set out in national law. 4. The Community trade mark court with which a counterclaim for revocation or for a declaration of invalidity of the Community trade mark has been filed shall inform the Office of the date on which the counterclaim was filed. The latter shall record this fact in the Register of Community trade marks. 5. Article 57(2) to (5) shall apply. 6. Where a Community trade mark court has given a judgment which has become final on a counterclaim for revocation or for invalidity of a Community trade mark, a copy of the judgment shall be sent to the Office. Any party may request information about such transmission. The Office shall mention the judgment in the Register of Community trade marks in accordance with the provisions of the Implementing Regulation. 7. The Community trade mark court hearing a counterclaim for revocation or for a declaration of invalidity may stay the proceedings on application by the proprietor of the Community trade mark and after hearing the other parties and may request the defendant to submit an application for revocation or for a declaration of invalidity to the Office within a time limit which it shall determine. If the application is not made within the time limit, the proceedings shall continue; the counterclaim shall be deemed withdrawn. Article 104(3) shall apply.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 100 Counterclaims):
1. A counterclaim for revocation or for a declaration of invalidity may only be based on the grounds for revocation or invalidity mentioned in this Regulation. 2. An EU trade mark court shall reject a counterclaim for revocation or for a declaration of invalidity if a decision taken by the Office relating to the same subject matter and cause of action and involving the same parties has already become final. 3. If the counterclaim is brought in a legal action to which the proprietor of the trade mark is not already a party, he shall be informed thereof and may be joined as a party to the action in accordance with the conditions set out in national law. 4. The EU trade mark court with which a counterclaim for revocation or for a declaration of invalidity of the EU trade mark has been filed shall not proceed with the examination of the counterclaim, until either the interested party or the court has informed the Office of the date on which the counterclaim was filed. The Office shall record that information in the Register. If an application for revocation or for a declaration of invalidity of the EU trade mark had already been filed before the Office before the counterclaim was filed, the court shall be informed thereof by the Office and stay the proceedings in accordance with Article 104(1) until the decision on the application is final or the application is withdrawn. 5. Article 57(2) to (5) shall apply. 6. Where an EU trade mark court has given a judgment which has become final on a counterclaim for revocation or for a declaration of invalidity of an EU trade mark, a copy of the judgment shall be sent to the Office without delay, either by the court or by any of the parties to the national proceedings. The Office or any other interested party may request information about such transmission. The Office shall mention the judgment in the Register and shall take the necessary measures to comply with its operative part. 7. The EU trade mark court hearing a counterclaim for revocation or for a declaration of invalidity may stay the proceedings on application by the proprietor of the EU trade mark and after hearing the other parties and may request the defendant to submit an application for revocation or for a declaration of invalidity to the Office within a time limit which it shall determine. If the application is not made within the time limit, the proceedings shall continue; the counterclaim shall be deemed withdrawn. Article 104(3) shall apply.
Article 101 
Applicable law 1. The Community trade mark courts shall apply the provisions of this Regulation. 2. On all matters not covered by this Regulation a Community trade mark court shall apply its national law, including its private international law. 3. Unless otherwise provided in this Regulation, a Community trade mark court shall apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 101 Applicable law):
1. The EU trade mark courts shall apply the provisions of this Regulation. 2. On all trade mark matters not covered by this Regulation, the relevant EU trade mark court shall apply the applicable national law. 3. Unless otherwise provided in this Regulation, an EU trade mark court shall apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located.
Article 102 
Sanctions 1. Where a Community trade mark court finds that the defendant has infringed or threatened to infringe a Community trade mark, it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the Community trade mark. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with. 2. In all other respects the Community trade mark court shall apply the law of the Member State in which the acts of infringement or threatened infringement were committed, including the private international law.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 102 Sanctions):
1. Where an EU trade mark court finds that the defendant has infringed or threatened to infringe an EU trade mark , it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the EU trade mark . It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with. 2. The EU trade mark court may also apply measures or orders available under the applicable law which it deems appropriate in the circumstances of the case.
Article 103 
Provisional and protective measures 1. Application may be made to the courts of a Member State, including Community trade mark courts, for such provisional, including protective, measures in respect of a Community trade mark or Community trade mark application as may be available under the law of that State in respect of a national trade mark, even if, under this Regulation, a Community trade mark court of another Member State has jurisdiction as to the substance of the matter. 2. A Community trade mark court whose jurisdiction is based on Article 97(1), (2), (3) or (4) shall have jurisdiction to grant provisional and protective measures which, subject to any necessary procedure for recognition and enforcement pursuant to Title III of Regulation (EC) No 44/2001, are applicable in the territory of any Member State. No other court shall have such jurisdiction.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 103 Provisional and protective measures):
1. Application may be made to the courts of a Member State, including EU trade mark courts , for such provisional, including protective, measures in respect of an EU trade mark or EU trade mark application as may be available under the law of that State in respect of a national trade mark, even if, under this Regulation, an EU trade mark court of another Member State has jurisdiction as to the substance of the matter. 2. An EU trade mark court whose jurisdiction is based on Article 97(1), (2), (3) or (4) shall have jurisdiction to grant provisional and protective measures which, subject to any necessary procedure for recognition and enforcement pursuant to Title III of Regulation (EC) No 44/2001, are applicable in the territory of any Member State. No other court shall have such jurisdiction.
Article 104 
Specific rules on related actions 1. A Community trade mark court hearing an action referred to in Article 96, other than an action for a declaration of non-infringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue before another Community trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office. 2. The Office, when hearing an application for revocation or for a declaration of invalidity shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue on account of a counterclaim before a Community trade mark court. However, if one of the parties to the proceedings before the Community trade mark court so requests, the court may, after hearing the other parties to these proceedings, stay the proceedings. The Office shall in this instance continue the proceedings pending before it. 3. Where the Community trade mark court stays the proceedings it may order provisional and protective measures for the duration of the stay.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 104 Specific rules on related actions):
1. An EU trade mark court hearing an action referred to in Article 96, other than an action for a declaration of non-infringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the EU trade mark is already in issue before another EU trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office. 2. The Office, when hearing an application for revocation or for a declaration of invalidity shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the EU trade mark is already in issue on account of a counterclaim before an EU trade mark court . However, if one of the parties to the proceedings before the EU trade mark court so requests, the court may, after hearing the other parties to these proceedings, stay the proceedings. The Office shall in this instance continue the proceedings pending before it. 3. Where the EU trade mark court stays the proceedings it may order provisional and protective measures for the duration of the stay.
Article 105 
Jurisdiction of Community trade mark courts of second instance — Further appeal 1. An appeal to the Community trade mark courts of second instance shall lie from judgments of the Community trade mark courts of first instance in respect of proceedings arising from the actions and claims referred to in Article 96. 2. The conditions under which an appeal may be lodged with a Community trade mark court of second instance shall be determined by the national law of the Member State in which that court is located. 3. The national rules concerning further appeal shall be applicable in respect of judgments of Community trade mark courts of second instance.
Amendment rationale: CONTEXT OF THE PROPOSAL 1.1. General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. In 2007, when addressing the issue of the financial perspectives of OHIM, the Council[1] emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. In its 2008 Small Business Act[2] the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate[4]. Finally, in its 2011 IPR strategy for Europe[5], the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. 1.2. Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: · Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); · Streamlining procedures to apply for and register a European trade mark (see section 5.2); · Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); · Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); · Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5).
Revised version (Article 105 Jurisdiction of EU trade mark courts of second instance — Further appeal):
1. An appeal to the EU trade mark courts of second instance shall lie from judgments of the EU trade mark courts of first instance in respect of proceedings arising from the actions and claims referred to in Article 96. 2. The conditions under which an appeal may be lodged with a EU trade mark court of second instance shall be determined by the national law of the Member State in which that court is located. 3. The national rules concerning further appeal shall be applicable in respect of judgments of EU trade mark courts of second instance.