Published: 2005-06-29
Key Benefits:
5.7.2005 |
EN |
Official Journal of the European Union |
L 172/4 |
COMMISSION REGULATION (EC) No 1041/2005
of 29 June 2005
amending Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark
(Text with EEA relevance)
THE COMMISSION OF THE EUROPEAN COMMUNITIES,
Having regard to the Treaty establishing the European Community,
Having regard to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (1), and in particular Article 157 thereof,
Whereas:
(1) |
According to Regulation (EC) No 40/94, it is necessary to adopt technical measures to implement dispositions concerning the standard form for the searches reports, division of the application and registration, revocation of decisions, authorisations, and decisions taken by a single member of the Opposition or Cancellation Division. |
(2) |
After 10 March 2008 the search system will remain compulsory for Community trade marks, but it should be made optional, subject to the payment of a fee, for searches in the trade mark registers of the Member States which notified their own decision to carry out a search. A standard form comprising essential elements for the search report is hereby laid out with a view to improving the quality and uniformity of such search reports. |
(3) |
The declaration of division and registration must comply with the elements set out in the present regulation. The new ex officio revocation of a decision or an entry in the register by the Office for Harmonization in the Internal Market (trade marks and designs) (The Office) must comply with the specific procedure as established in the present regulation. The exceptional cases where an authorisation is mandatory are specified. A list of simple cases where a decision can be taken by a single member of the Opposition or Cancellation Divisions is provided for. |
(4) |
Furthermore, existing rules should be amended in order to improve or clarify the procedure for registration. In addition, certain procedural points should be amended without changing the substance of the system. |
(5) |
In order to cover the specificities and facilities of the e-filing procedure, the following provisions are amended: Rule 1(1)(c), Rule 3(2), Rule 61, Rule 72(4), Rule 79, Rule 82, Rule 89(1) and (2). |
(6) |
The electronic filing and electronic publication of Community trade mark applications should facilitate the filing of trade marks in general and in particular enhance the filing of trade marks consisting of colours per se or sounds by means of a representation of the mark which is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The technical conditions, in particular the data format for sound files, should be laid down by the President of the Office. E-filing of trade marks consisting of sounds can be accompanied by an electronic sound file and this file can be included in the electronic publication of the Community trade mark applications to facilitate public access to the sound itself. |
(7) |
The provisions concerning the opposition procedure should be reframed completely as to specify the admissibility requirements, to specify clearly the legal consequences of deficiencies and to bring the provisions in the chronological order of the proceedings. |
(8) |
Following the additional competence of the Office for the examination of the admissibility of conversion the refusal of a request for conversion may become partial in the sense that conversion can be acceptable for some Member States but inadmissible for others. In addition, some criteria to be used for examining absolute grounds by reference to the language of a Member State should be added. |
(9) |
Regarding costs to be born by the losing party in opposition and cancellation procedures, reimbursable costs of the representation should be limited but the present maximum amounts should be increased slightly in view of the time elapsed since adoption of the Implementing Regulation. Where witnesses or experts are summoned, no such maximum rate should be provided but the reimbursable costs shall comprise the actual amounts those witnesses and experts can claim. |
(10) |
Commission Regulation (EC) No 2868/95 (2) should therefore be amended accordingly. |
(11) |
The measures provided for in this Regulation are in accordance with the opinion of the Committee on Fees, Implementation Rules and the Procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (trade marks and designs), |
HAS ADOPTED THIS REGULATION:
Article 1
Article 1 of Regulation (EC) No 2868/95 is amended as follows:
1. |
Rule 1(1) is amended as follows:
|
2. |
Rule 3 is amended as follows:
|
3. |
Rule 4 is replaced by the following: ‘Rule 4 Fees for the application The fees payable for the application shall be:
|
4. |
The following Rule 5a is inserted: ‘Rule 5a Search report The search reports shall be prepared using a standard form which contains at least the following information:
|
5. |
In Rule 6(1) the following sentence is added: ‘If the previous application is a Community trade mark application, the Office shall ex officio include a copy of the previous application in the file of the Community trade mark application.’; |
6. |
Rule 8(2) is replaced by the following:
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7. |
Rule 10 is replaced by the following: ‘Rule 10 Searches by national offices
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8. |
Point (c) of Rule 12 is replaced by the following:
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9. |
In Rule 13, point (c) of paragraph 1, and paragraph 2 are deleted; |
10. |
The following Rule 13a is inserted: ‘Rule 13a Division of the application
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11. |
Rules 15 to 20 are replaced by the following: ‘Rule 15 Notice of opposition
Rule 16 Use of languages in the notice of opposition
Rule 16a Information of the applicant Any notice of opposition and any document submitted by the opposing party, as well as any communication addressed to one of the parties by the Office prior to the expiry of the period referred to in Rule 18 shall be sent by the Office to the other party for purposes of informing of the introduction of an opposition. Rule 17 Examination of admissibility
Rule 18 Commencement of opposition proceedings
Rule 19 Substantiation of the opposition
Rule 20 Examination of the opposition
|
12. |
Rule 22 is replaced by the following: ‘Rule 22 Proof of use
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13. |
Rule 24(2) is replaced by the following:
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14. |
In Rule 25(1) point (c) is deleted; |
15. |
The following Rule 25a is inserted: ‘Rule 25a Division of a registration
|
16. |
In Rule 26(2), point (d) is deleted; |
17. |
Rule 28(1) is amended as follows:
|
18. |
Rule 30 is replaced by the following: ‘Rule 30 Renewal of registration
|
19. |
Rule 31(3) and (4) is deleted; |
20. |
Rule 32(4) is replaced by the following:
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21. |
Rule 33 is amended as follows:
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22. |
Rule 34 is replaced by the following: ‘Rule 34 Special provisions for the registration of a licence
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23. |
Rule 35(3) is replaced by the following:
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24. |
Point (c) of Rule 36(1) is deleted; |
25. |
Rule 38 is amended as follows:
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26. |
Rule 39 is replaced by the following: ‘Rule 39 Rejection of the application for revocation or for declaration of invalidity as inadmissible
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27. |
Rule 40 is amended as follows:
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28. |
Rules 44 and 45 are replaced by the following: ‘Rule 44 Application for conversion
Rule 45 Examination of application for conversion
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29. |
Rule 47 is replaced by the following: ‘Rule 47 Transmission to central industrial property offices of the Member States Where the application for conversion complies with the requirements of the Regulation and these Rules, the Office shall transmit the application for conversion and the data referred to in Rule 84(2), to the central industrial property offices of the Member States, including the Benelux Trade Mark Office, for which the application has been found admissible. The Office shall inform the applicant of the date of transmission.’; |
30. |
In Rule 50(1) the following is added: ‘In particular, when the appeal is directed against a decision taken in opposition proceedings, Article 78a of the Regulation shall not be applicable to the time limits fixed pursuant to Article 61(2) of the Regulation. Where the appeal is directed against a decision of an Opposition Division, the Board shall limit its examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division in accordance with the Regulation and these Rules, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 74(2) of the Regulation.’; |
31. |
Rule 51 is replaced by the following: ‘Rule 51 Reimbursement of appeal fees The appeal fee shall only be reimbursed by order of either of the following:
|
32. |
Rule 53 is replaced by the following: ‘Rule 53 Correction of errors in decisions Where the Office becomes aware, of its own motion or at the instance of a party to the proceedings, of a linguistic error, error of transcription or obvious mistake in a decision, it shall ensure that error or mistake is corrected by the department or division responsible.’ |
33. |
The following Rule 53a is inserted: ‘Rule 53a Revocation of a decision or entry in the Register
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34. |
Rule 59(4) is replaced by the following:
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35. |
Rule 60 is replaced by the following: ‘Rule 60 Minutes of oral proceedings
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36. |
Rule 61 is amended as follows:
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37. |
Rule 62 is amended as follows:
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38. |
In Rule 65(1), the second sentence is replaced by the following: ‘Notification shall be deemed to have been taken place on the date on which the communication was received by the telecopying device of the recipient.’; |
39. |
Rule 66(1) is replaced by the following:
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40. |
Rule 72(2) is replaced by the following:
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41. |
Rule 72(4) is replaced by the following:
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42. |
Rule 76 is amended as follows:
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43. |
Rule 79 is amended as follows:
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44. |
The following Rule 79a is inserted: ‘Rule 79a Annexes to written communications Where a document or an item of evidence is submitted in accordance with Rule 79 point (a) by a party in a proceeding before the Office involving more than one party to the proceedings, the document or item of evidence, as well as any annex to the document, shall be submitted in as many copies as the number of parties to the proceedings.’ |
45. |
Rule 80 is amended as follows:
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46. |
Rule 81 is deleted; |
47. |
Rule 82 is amended as follows:
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48. |
Rule 83 is replaced by the following: ‘Rule 83 Forms
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49. |
Rule 84 is amended as follows:
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50. |
Rule 85(1) is replaced by the following:
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51. |
Rule 89(1) and (2) is replaced by the following:
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52. |
Rule 91 is replaced by the following: ‘Rule 91 Keeping of files
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53. |
Rule 94 is amended as follows:
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54. |
Rule 98 is replaced by the following: ‘Rule 98 Translations
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55. |
Rule 100 is replaced by the following: ‘Rule 100 Decisions taken by a single member The cases in which pursuant to Article 127(2), or Article 129(2), of the Regulation a single member of the Opposition Division or of the Cancellation Division may take a decision shall be the following:
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56. |
Paragraphs 1, 2 and 3 of Rule 101 are replaced by the following:
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57. |
Rule 114 is amended as follows:
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58. |
Point (c) of Rule 122(1) is replaced by the following:
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Article 2
1. This Regulation shall enter into force on the 20th day following its publication in the Official Journal of the European Union.
2. In Article 1 point (1)(d), point (3), point (4) and point (7) shall apply from 10 March 2008, as shall the second part, commencing with the word ‘including’, of point (a) of Rule 83(1), set out at point 48 of Article 1 of this Regulation.
This Regulation shall be binding in its entirety and directly applicable in all Member States.
Done at Brussels, 29 June 2005.
For the Commission
Charlie McCREEVY
Member of the Commission
(1) OJ L 11, 14.1.1994, p. 1. Regulation as last amended by Regulation (EC) No 422/2004 (OJ L 70, 9.3.2004, p. 1).
(2) OJ L 303, 15.12.1995, p. 1. Regulation as amended by Regulation (EC) No 782/2004 (OJ L 123, 27.4.2004, p. 88).
(3) OJ L 208, 24.7.1992, p. 1.’;