Chapter 8. Conversion
| Author | Office for Harmonization in the Internal Market |
| Profession | European Commission |
| Pages | 111-134 |
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Pursuant to Article 108 (1) CTMR, the applicant or proprietor can request conversion of his CTM application or CTM into a national trade mark application with effect in the Member States designated in the request, where the CTM application has been refused or withdrawn or is deemed to be withdrawn, or where the CTM ceases to have effect.
The request for conversion must be filed with the Office, which examines the request, with the exception of whether or not conversion is excluded pursuant to Article 108 (2) CTMR where the conversion into a national trade mark of one or more given Member States would run counter to the contents of the decision of the Office or a Community trade mark court which gave rise to the request for conversion.
Once the Office has transmitted the request for conversion to the designated offices, the request for conversion becomes a national trade mark application under the national law of the designated offices, keeping, however, the original filing and, if any, priority date before the Office and the date of seniority in the Member State concerned.
Each designated office will examine whether conversion is excluded pursuant to Article 108 (2) CTMR (Article 110 (1) CTMR) and will treat and examine the ensuing trade mark application in the same way as a normal national trade mark application, subject to the following:
- The national office may require payment of the national application fee, indication of an address for service in the State in question, translation of the request for conversion, and furnishing of a representation of the mark in the required number of copies, within a time limit of at least two months following the receipt of the request for conversion by the national office (Article 110 (3) CTMR);
- The national office may not impose any other formal requirements different from or additional to those provided for in the CTMR and the IR (Article 110 (2) CTMR);
- Certain national laws provide for a system registration under facilitated conditions, where the request for conversion is based on a CTM which was already examined and registered by the Office.
The following table shows the national requirements for requests for conversion.
The requirements which the applicant has to observe before the national office (including the Benelux Office) following transmittal of the request for conversion have also been indicated where the national law does not contain particular provisions on conversion of CTMs, because it is only natural that these requirements are automatically applicable to national trade mark applications ensuing from a request for conversion, to the extent that they are not precluded by Article 110 (2), (3) CTMR. However, information concerning the scope of examination of the ensuing national trade mark application has been included only if the national law contains express provisions to this extent. Where there are no such special provisions, Article 108 (2) CTMR applies directly, and the ensuing national trade mark application will be subject to examination on formalities, absolute grounds and, as the case may be, relative grounds for refusal as a normal national trade mark application.
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Column 1 deals with the requirements mentioned in Article 110 (3).
Column 2 specifies the due date and time limit for the payment of the application fees.
Column 3 contains additional information on the appointment of a representative.
Column 4 contains information on the scope of examination by the national office where the relevant national law contains special provisions on the examination of requests for conversion and/or the ensuing national trade mark applications.
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| Austria | Conversion is particulary regulated by ßß 69b and 69c, AT-TML | |||
| (a) Payment of application fee for an individual mark: euros 69 Class fee for the first three classes: euros 15 Fee for each class exceeding three: euros 21 ßß 18, 69b (2), first sentence, AT-TML Payment of application fee for a collective mark: euros 276 ß 63 (2), AT-TML, ß 69b (2) no. 1, AT-TML (b) Translation into the German language of the conversion request and its accompanying documents ß 69b (2) no. 3, AT-TML (c) Indication of an address for service in Austria (ß 69b (2), no. 4 TML), except 1. where the applicant is from a country outside the European Economic Area, if he is represented by an attorney-at-law, a notary public, or a patent attorney, in accordance with the regulations governing the respective profession, 2. where the applicant has his place of residence within the European Economic Area, if he has appointed | (a) Within a time limit of 2 months counted from the invitation by the Austrian Patent Office ß 69b (2), ATTML (b) Within a time limit of 2 months counted from the invitation by the Austrian Patent Office ß 69b (2), ATTML (c) Within a time limit of 2 months counted from the invitation by the Austrian Patent Office ß 69b (2), ATTML | If a representative acts without an authorization or, in the case of an attorney-at-law, a notary public or a patent attorney, without making reference to an authorization granted to him, any procedural acts taken by him shall be valid only if he submits a regular authorization or makes reference to the authorization granted to him, within a reasonable time limit fixed by the Austrian Office ß 61 (3), AT-TML | 1. Examination as to the admissibility of the request for conversion: - Whether the rights of the proprietor of the CTM have been revoked for nonuse, unless the CTM, according to Austrian law, has been put into genuine use in Austria - Whether in accordance with a decision of the OHIM or of a national court, grounds for refusal of registration or grounds for revocation or invalidity apply in Austria, to the CTM application or the CTM Where the Austrian Patent Office finds that these conditions are not met, it will notify the applicant. Eventually, the request for conversion will be refused ß 69b (1), ATTML 2. Examination of the ensuing application in the same way as any other national trade mark application | |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| a person for the purposes of receiving notifications who is resident in Austria (d) Where the mark does not consist exclusively of figures, letters or words having no special pictorial form or claim to particular characters, 20 representations of the mark must be submitted. In case of a sound mark, in addition to 20 representations of the mark by means of a sheet of music or a sonogram, a reproduction of the sound mark on any media used for the purposes of recording sound must be submitted ß 69b (2) no. 2, AT-TML ß 10, Order concerning the Patent Office | (d) Within a time limit of 2 months counted from the invitation by the Austrian Patent Office ß 69b (2), first sentence, ATTML The time limits referred to under (a) - (d) may be extended. | ß 69c (1), ATTML Exception: If, however, the conversion request relates to a registered CTM, the ensuing application will not be examined as to absolute grounds for refusal ß 69c (2), ATTML | ||
| Benelux | Conversion is particularly regulated by Article 1.34 ER BCIP | |||
| (a) For an individual mark: Filing fee, basic amount: euros 240 Supplementary amount for each class of goods and services exceeding the third class of the International Classification in which the goods and services are listed: euros 37 For a collective mark: Filing fee, basic amount: euros 373 Supplementary amount for each class of goods and services exceeding the third class of the International Classification in which the goods and services are listed: euros 37 Articles 1.34 and 4.4. (1) ER BCIP | (a) The minimum time limit is one month. It can be extended ex officio and will be on request, to a maximum of six months Article 1.34 (2) ER BCIP | Not mandatory | Examination on formalities and absolute grounds as a normal Benelux trade mark application | |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| Publication, on request, of a description - maximum 50 words - of the distinctive elements of the mark, fee: euros 39 Articles 1.1. 82), 1.34 and 4.4. (1) ER BCIP (b) All documents submitted to the Benelux Office shall be drawn up in Dutch or French Articles 1.34 and 3.3 ER BCIP (c) Persons who have neither headquarters nor a place of residence on the EC/EES territory and who have not appointed a representative shall state an address for service on the EC/EES territory Articles 1.34 and 3.6 (4) ER BCIP (d) The Director-General establishes the rules for representation of trademarks and designs | (b) The minimum time limit is one month. It can be extended ex officio and will be on request, to a maximum of six months Article 1.34 (2) ER BCIP (c) The minimum time limit is one month. It can be extended ex officio and will be on request, to a maximum of six months Article 1.34 (2) ER BCIP (d) The minimum time limit is one month. It can be extended ex officio and will be on request, to a maximum of six months Article 1.34 (2) ER BCIP |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| Cyprus | No provision in Cyprus TM Law | |||
| Czech Republic | Conversion is particularly regulated by Article 50 CZ-TML, ß 14 (2) RE | |||
| (a) Fee: - Individual marks: 5000 CZK (173 euros) - Collective marks: 10000 CZK (345euros) - Plus 500 CZK (17 euros) for each class of goods and services exceeding three Article 50 (1) a), CZ-TML (Part XI of the Law No 634/2004) (b) Translation into Czech of the CTM application and its accompanying documents Article 50 (1) b), CZ-TML (c) Address for service in the Czech Republic; Article 50 (1) c), CZ-TML | (a) Within 2 months following the delivery of the official communication Article 50 (1), CZTML (b) Within 2 months following the delivery of the official communication Article 50 (1), CZTML (c) Within 2 months following the delivery of the official communication Article 50 (1), CZTML | Person who does not have an enterprise, permanent residency or seat in the territory of the Czech Republic has to be represented in proceedings on trade marks pursuant to special laws Article 46 (2), CZTML | The Office examines if the request for a conversion is admissible pursuant to CTMR 108, (2) Article 50 (2),CZTML If the request is admissible, it shall be treated as an application for the registration of the trade mark under the CZ-TML If not, the request will be refused Article 50 (2), CZTML Where conversion of a registered CTM is requested: The mark is registered without any further examination Article 50 (4), CZTML | |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| (d)three reproductions of the trade mark , except in the case of a word mark ß 14 (2), CZ-RE | (d) Within 2 months following the delivery of the official communication Article 50 (1), TML | |||
| Denmark | Conversion is particularly regulated by ß 20, DK-ORDER and ß 7 (2), DK-FEE | |||
| (a) Payment of the basic application fee for the registration of a trade mark or a collective mark: 2,350 DKK ß 20 (1) no. 1, DK-RE, ß 7 (1), (2), DK-FEE Fee for each class exceeding three: 600 DKK ß 20 (1) no. 1, DK-RE, ß 7 (1), (2), DK-FEE (b) Translation of the conversion request and its annexes into Danish ß 20 (1), DK-RE (c) Indication of an address for service in Denmark ß 20 (1) no. 3, DK-RE (d) A reproduction of the mark ß 20 (1) no. 4, DK-RE | (a) Within two months from the Patent Office's reception of the request for conversion ß 20 (1), DK-RE (b) Within two months from the Patent Office's reception of the request for conversion ß 20 (1), DK-RE (c) Within two months from the Patent Office's reception of the request for conversion ß 20 (1), DK-RE (d) Within two months from the Patent Office's reception of the request for conversion ß 20 (1), DK-RE | |||
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| Estonia | Conversion is particularly regulated by ß 71 3 EST-TML | |||
| (a) Fee: Individual marks: 2200 EEK (euros 141) Collective marks: 3000 EEK (euros 192) Plus 700 EEK (45 euros) for each class of goods and services exceeding one Article 125, EST-FEE (b) Translation into Estonian of the accompanying documents of the request for the conversion ß 71 3 (3) 1), EST-TML (c) The address of a commercial or industrial enterprise operating in Estonia and belonging to a person of a foreign state or the authorisation document of an authorised patent agent (d) No special requirements | (a) - (d) Within two months as of the date on which a corresponding request from the OHIM is received in the Patent Office. The conversion application is considered to be withdrawn if the applicant does not comply with the deadline ß 71 3 (3), ESTTML | A person with no residence, seat or commercial or industrial enterprise operating in Estonia shall authorise a patent agent as the person's representative to perform procedures related to trade marks in the Patent Office and in the Board of Appeal, except the filing of an application ß 13 (2), ESTTML | 'The Patent Office shall perform examinations and process requests for conversion pursuant to the provisions of Chapter 4 of this Act [i.e. the Trade Marks Act], taking into account the specific provisions arising from the Community Trade Mark Regulation' ß 71 3 (5), ESTTML | |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| Finland | Conversion is particularly regulated by ß 57a, FI-TML | |||
| (a) Payment of fee - for individual marks: euros 165 plus euros 65 for each class of goods and services exceeding three - for collective marks: euros 235 plus euros 65 for each class of goods and services exceeding three ß 57a (1) (1), FI-TML ß 6 FI-FEE (b) Translation of the conversion request and accompanying documents ß 57a (1) (2), FI-TML (c) Indication of an address for service in Finland ß 57a (1) (3), FI-TML (d) Representation of the trade mark ß 57a (1) (4), FI-TML | (a) Within a time limit given in an invitation by the National Board of Patents and Registration of Finland ß 57a (1), FI-TML (b) Within a time limit given in an invitation by the National Board of Patents and Registration of Finland ß 57a (1), FI-TML (c) Within a time limit given in an invitation by the National Board of Patents and Registration of Finland ß 57a (1), FI-TML (d) Within a time limit given in an invitation by the National Board of Patents and Registration of Finland ß 57a (1), FI-TML | The application is treated as an application for registration of a national trade mark | ||
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| France | Conversion is particularly regulated in Articles L. 717-5, R. 717-9 and R. 717-10, FR-IP CODE | |||
| (a) Payment of fee euros 225 plus euros 40 for each class of goods and services exceeding three FR-FEE Article R. 717-9, FR-IP CODE (b) Translation into French of the conversion request and accompanying documents Article R. 717-9, FR-IP CODE | The conditions set out under (a), (b) and (c) must be satisfied within the time limits laid down by the Office Article R. 717-9, FR-IP CODE Where above mentioned requirements are not fulfilled within the time limited prescribed, the request is rejected and the fee paid is reimbursed Article R. 717-9, FR-IP CODE | Where the applicant has neither his domicile nor his principal place of business in a Member State of the Community or a Member State of the European Economic Area, he must appoint a representative established in a Member State of the Community or a Member State of the European Economic Area Article R. 717-9, FR-IP CODE | A request for conversion into a French national mark is subject to a new substantive examination, including formalities, absolute grounds and opposition procedure Where conversion has been requested in respect of a CTM for which seniority of an earlier mark registered in France was claimed, there will be no new substantive examination, and no opposition may be lodged Article L. 717-5, FR-IP CODE | |
| Germany | Conversion is particularly regulated in ß 125d, DE-TML | |||
| (a) Payment of application fee: - euros 300 for an individual mark - euros 900 for a collective mark Payment of fee for each class exceeding three: - euros 100 for an individual mark | (a) The applicant shall pay the specified fees within a period of three months from the receipt of the request for conversion by the Patent and Trade Mark Office. If the fee has not been paid in time, the request for | In principle, failure to appoint a domestic representative, as required under ß 96 DE-TML, will entail refusal of the application. There are no specific provisions on this as far as conversion is concerned | Where conversion of a CTM application is requested: New substantive examination Where conversion of a registered CTM is requested: Direct recordal of the trade mark in the German | |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| - euros 150 for a collective mark ß 125d (1) DE-TML in conjunction with No 331 100 to 331 400 of the schedule of fees, annex to ß 2 (1), DE-FEE (b) Applications must be filed in the German language; no specific rules on languages of requests for conversion ß 93, DE-TML (c) The proprietor of a filed or registered trade mark having neither a domicile nor a seat nor an establishment in Germany shall state an address for service in Germany or shall appoint as his representative a patent attorney or an attorney- at-law established in Germany or in a Member State of the European Union or a Member State of the EEA, provided that he appointed a domestic representative as an assignee for service (Zustellungsbevollmächti gte) ß 96 (1), (2), ß 125d (1), (4), DE-TML (d) Four twodimensional, identical copies of the representation of the mark, except in the case of a word mark ßß 8-12, DE-RE | conversion shall be deemed to have been withdrawn ß 125d (1), DETML ß 6 (1), DE-FEE | Filing of a written authorization will not be required by the German Patent and Trade Mark Office. ß 15 (4), DEDPMAV | Trade Mark Register. No new substantive examination; no opposition can be filed against the registration ß 125d (2)-(3), DE-TML ß 125d (2), (3), DE-TML expressly provides that the ensuing national application and trade mark maintain the filing date before the OHIM and, if any, the priority or seniority date (cf. Article 108 (3) CTMR) |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| Greece | Conversion is particularly regulated by Article 2, GR-DECREE | |||
| (a) Fee for the registration of the first class: euros 120 Fee for every additional class: euros 30 Article 2 (1) (a), GRDECREE, Article 35 (1), GR-TML (b) Translation into Greek of the conversion application and its accompanying documents (c) Power of attorney appointing a lawyer authorised to represent in Greece Article 2 (1) (c), GRDECREE (d) 10 representations of the mark; in case of colour marks, 10 representations in colour Article 2 (1) (d), GRDECREE | (a) Within a time limit of two months counted from the receipt of a notice sent to the applicant by the 'Direction de la propriété Commerciale et Industrielle' Article 2 (2), GRDECREE (b) Within a time limit of two months counted from the receipt of a notice sent to the applicant by the 'Direction de la propriété Commerciale et Industrielle' Article 2 (2), GRDECREE (c) Within a time limit of two months counted from the receipt of a notice sent to the applicant by the 'Direction de la propriété Commerciale et Industrielle' Article 2 (2), GRDECREE (d) Within a time limit of two months counted from the receipt of a notice sent to the applicant by the 'Direction de la propriété Commerciale et Industrielle' Article 2 (2), GRDECREE | A legal practitioner must be appointed for the representation of the applicant, and a power of attorney bearing the signature of the applicant must be filed. The legalisation of the applicant's signature is not required Article 2 (1) (c), GR-DECREE, Article 6 (3) (d), GR-TML | Examination, including on absolute and relative grounds for refusal, as in any Greek trade mark application Article 2 (4), GRDECREE | |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| Hungary | Conversion is particularly regulated by Article 76/E, HU-TML | |||
| (a) Payment of conversion fee -for a CTM application (individual mark) 54 800 HUF (217euros) in the case of more classes, for the second and each additional class, per class 32 000 HUF (127euros) - for a CTM application (collective mark) 300 000(1186euros) in the case of more classes, for the second and each additional class, per class 32 000 HUF (127euros) - for a CTM (individual mark) 37 400 HUF (148euros) in the case of more classes, for the second and each additional class, per class 16 000 HUF (63euros) - for a CTM (collective mark )160 000 HUF (635euros) in the case of more classes, for the second and each additional class, per class 16 000 HUF (63euros) Articles 11 (1), (2) and (7), HU-FEE (b) translation of the request into Hungarian and the accompanying documents Article 45 (5) , HU-TML | (a) within two months from receipt of the request by the Hungarian Patent Office Article 76/E (5), HU-TML (b) it shall be filed with the Hungarian Patent Office within four months from receipt of the request by the Hungarian Patent Office. Article 50 (5), HU-TML; Article 76/E (6) HU-TML | In the absence of a provision of an international treaty to the contrary, foreign applicants shall be represented by an authorized patent attorney or an attorney-atlaw in all trademark matters within the competence of the Hungarian Patent Office. This provision shall not apply where the foreign party is a natural person or a legal entity whose permanent residence or domicile is in the territory of a Member State of the European Economic Area Article 44 (1) and (4) HU-TML The provisions of industrial property laws concerning representation of foreign applicants shall apply mutatis mutandis to the payment of fees under HUFEE by foreign applicants Article 21(2) HUFEE | The request for the conversion of a Community trade mark application shall be treated as an application for the registration of the trade mark under the Act the provisions of Chapters VII to IX shall apply mutatis mutandis Article 76/E (10), HU-TML Where conversion of a registered CTM is requested: The mark is registered without any further examination after the payment of the filing fee and filing of the translation prescribed in paragraph 6 of the Article 76/E HUTML Article 76/E, HUTML | |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| (c) Appointment of a professional patent attorney or an attorney at law in all trade mark matters within the competence of the Hungarian Patent Office Articles 44 (1) and (4), HU-TML | ||||
| Ireland | Conversion is particularly regulated by IE-S.I. No. 229 | |||
| (a) Application for the registration of a trade mark: euros 70 Class fees for each class over one: euros 70 Section 8 (2), IE-S.I. No. 229, Schedule 3, IERULES (b) A translation in the English language of the request and of the documentation accompanying it Section 8 (3) (b) (i), IES. I. No. 229 (c) An address for service in Ireland Section 8 (3) (b) (iii), IES. I. No. 229 (d) A representation of the trade mark Section 8 (3) (b) (ii), IES. I. No. 229 | (a) - (d) Within a period of 3 months of the giving of the notification by the Controller (Irish Patent Office) Section 8 (4), IES. I. No. 229 | 1. Examination as to the admissibility of the request for conversion (the “preliminary decision”): - Whether the rights of the proprietor of the CTM have been revoked for nonuse, unless the CTM, according to Irish law, has been put into genuine use in Ireland - Whether in accordance with a decision of the OHIM or of a national court, grounds for refusal of registration or grounds for revocation or invalidity apply in Ireland, to the CTM application or the CTM Section 8 (1), IES. I. No. 229 2. Where the preliminary decision is taken that the request is admissible: examination of the ensuing application (whether relating | ||
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| to a request for conversion of a CTM application or a registered CTM into a national mark) in the same way as any other national trade mark application Section 8 (1), IES. I. No. 229 | ||||
| Italy | Conversion is particularly regulated by IT-ORDER | |||
| (a) Payment of application fee - individual marks: euros 101 plus euros 34 for each class of goods and services exceeding one - collective marks: euros 337, irrespective of the number of classes of goods and services. (b) Translation into Italian of the CTM application and its accompanying documents (c) Domicile in Italy or appointment of a representative inscribed before the Italian Institute of Industrial Property Agents or of a lawyer inscribed at the Bar | Payment of fee must be made to postal account No. 82618000 (a)-(d) The Italian Office will request the applicant for conversion to present the documentation Where a representative has been appointed and deposited a power of attorney, the Italian Office will forward the request for documentation directly to the representative. The documentation must be submitted within a time limit of 90 days from the date of the request made by the Italian office | Where a representative has been appointed he must deposit a power of attorney, accompanied by the payment of a fee of euros 34, which is to be credited to postal current account No 82618000 | Where the Italian office has decided that the request for conversion is admissible in accordance with Article 108 (2) CTMR, it will be treated as a normal application for a national mark | |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| Latvia | Conversion is particularly regulated by Article 39.5, LV-TML | |||
| (a) Payment of application fee - individual marks: 60 LVL (86,1euros) plus 20 LVL (28,7euros) for each class of goods and services exceeding one Article 39.5(1), LV-TML - collective marks: 150 LVL (215,2euros) plus 20 LVL(28,7euros) for each class of goods and services exceeding one Article 39.5(1), LV-TML (b) Translation of the conversion request including the list of goods and services, into Latvian Articles 39.5(4), 10 (7), LV-TML (c) Appointment of a professional patent attorney (trade mark agent) Article 10 (11), LV-TML (d) No special requirements | (a) Within three months Article 39.5(1), LV-TML (b) Within three months Article 39.5(1), LV-TML (c) Within three months Article 39.5(1), LV-TML | A foreign applicant may only file an application, maintain correspondence, and perform all further actions before the Patent Office through a professional patent attorney (trade mark agent) Article 10 (11), LV-TML | Trade mark application ensuing from the request for conversion of the CTM is subject to a new substantive examination, including formalities, absolute grounds and opposition procedure, subject to the provision of Article 110 (2) of the CTMR Article 39.5(4), LV-TML | |
| Lithuania | Conversion is particularly regulated by LT-RE, Chapter XXXVI | |||
| (a) Payment of application fee - individual marks: 240 LTL (69,51euros) plus 120 LTL (34,75 euros) or each class of goods and services exceeding one Para. 285.1. LT-RE, LTFEE Annex 4, par. 1 and 2 No fees for collective marks | (a) - (d) Within 2 months as of the date on which a corresponding conversation application is sent from the OHIM to the State Patent Bureau of the Republic of Lithuania (SPB). The application fee has to paid at the same day as | Foreign natural persons who are not permanent residents of the Republic of Lithuania or any other EU Member State and legal persons of foreign states who do not have a branch office or representative office registered in the Re- | Where the State Patent Bureau has decided that the conversion application is admissible in accordance with Article 108(2) CTMR and para. 285 of LT-RE it will be treated as a normal application for a national mark taking account, where | |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| (b) Translation of the conversation application and its accompanying documents into Lithuanian Para. 285.2. LT-RE (c) Application with the address for communication in the territory of the Republic of Lithuania Para. 285.3. LT-RE (d) A representation of the mark - 2 reproductions if a mark is in standard letters, in all others cases - 5 reproductions Para. 285.4, 32 LT-RE | filing of other documents Para. 285 LT-RE The conversion application will be checked by the SPB during 1 month after the receipt of all documents. The conversion application is considered to be withdrawn if the applicant does not follow the deadline and if one of the mentioned documents as well as fees are missing or incorrect Para. 286, 287 LT-RE | public of Lithuania or a registered office, a branch office or a representative office in any other EU Member State, shall file applications to the State Patent Bureau and perform all actions relating to the registration of the mark with the State Patent Bureau, including also representation at the Appeals Division, through a patent attorney of the Republic of Lithuania Article 11 (2) LTTM | appropriate, of the priority or seniority under Articles 34 and 35 CTMR. Para. 288, 289 LT-RE Where conversion of a registered CTM is requested, the mark is registered without any further examination Par. 290 LT-RE | |
| Malta | Conversion is particularly regulated by Article 10, MT-CTM Rules | |||
| (a) Fee Individual marks (included one class): 50 MTL (116 euros) Each class of goods and services exceeding one 50 MTL. Separate application for each class Collective marks (included one class): 50 MTL Art. 10 (2), MT-CTM Rules Each class of goods and services exceeding one 50 MTL. Separate application for each class (b) Maltese or English (c) and (d) not required Article 8 (1), MT-RE | (a) - (b) Within ninety (90) working days from the date of filing a national application resulting from a conversion application | Representation not required | Where the Comptroller decides that a request for a conversion application is admissible pursuant to Article 108, it shall be treated as an application for registration of a trade mark under the Act Article 10 (2). MT-CTM Rules | |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| Poland | It is not regulated by the Polish Trade Mark Law but since CTMR has a direct effect in Poland it is accepted | |||
| Portugal | Conversion is particularly regulated by Article 247, PT - IP Code | |||
| (a) Fee Individual marks (for one class): euros 81,09 Each class of goods and services exceeding one: euros 43,24 Collective marks (for one class): euros 81,09 Each class of goods and services exceeding one: euros 43,24 (b) Translation into Portuguese of the conversion request and its accompanying documents (c) Designate a representative to act before the Portuguese Industrial Property Office (d) Two representation of the trade mark | (a) Within a time limit of three months from the notification sent by the Portuguese Industrial Property Office Article 247 (2), PT-IP Code (b) Within a time limit of three months from the notification sent by the Portuguese Industrial Property Office (c) Within a time limit of three months from the notification sent by the Portuguese Industrial Property Office (d) Within a time limit of three months from the notification sent by the Portuguese Industrial Property Office | Persons not resident in Portugal must either be represented by a lawyer or an official industrial property agent or indicate an address for service in Portugal Articles 10 (1), 247 (2) (d), PT-IP Code | Where the Portuguese Industrial Property Office has decided that the request for conversion is admissible in accordance with Article 108 (2) CTMR, it will be treated as a normal application for a national mark Article 247, PT-IP Code | |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| Slovakia | Conversion is particularly regulated by article 36b, SK-TML | |||
| (a) Fee: - Individual marks: 3500 SKK (93 euros) - Collective marks: 7000 SKK (188 euros) - Plus 300 SKK (8 euros) for each class of goods and services exceeding three (b) Translation into Slovak of the CTM application and its accompanying documents Article 36b (1) a), SKTML (c) Address for service in the Slovak Republic Article 36b (1) b), SKTML (d) two reproductions of the trade mark , except in the case of a word mark Article 36b (1) c), SKTML | (a) Within 15 days from the delivery of the Office invitation Law No 145/1995 Coll. (b) Within two months from the delivery of the Office invitation Article 36b (1), SK-TML (c) Within two months from the delivery of the Office invitation. Article 36b (1) , SK-TML (d) Within two months from the delivery of the Office invitation. Article 36b (1), SK-TML | An authorised representative must represent natural persons and legal entities that do not have their domicile or seat in the Slovak Republic, for the trade mark procedure Article 34 (3), SKTML | If the request for conversion is admissible in accordance with Article 108 (2), the Slovak Industrial Property Office will treat it as an application for the registration of the trade mark under the SKTML Where conversion of a registered CTM is requested: The mark is registered without any further examination Article 36b (4), SK-TML | |
| Slovenia | Conversion is particularly regulated by Article 4, SL-CTM Decree | |||
| (a) Application fee: 1. Individual marks: - for up to three classes 20.000 SIT (83,5euros) - for each additional class 3.000 SIT (12,5euros) | (a-d) Within three months from the receipt of the Office invitation The applicant may request, prior to the expiry of a time limit, its extension for up to three months | Foreign persons having neither residence nor real and effective industrial or commercial establishment in the Republic of Slovenia, must appoint one of the repre | If a request for a conversion of an application is admissible pursuant Article 108 CTMR, it shall be treated as a national application for a mark | |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| 2. Collective marks: - for up to three classes 50.000 SIT (209euros) - for each additional class 9.000 SIT (37,5euros) (b) Translation into Slovene of the CTM application and its accompanying documents (c) Address for correspondence which is in the territory of the Republic of Slovenia or power of attorney appointing one of the representatives registered by Slovenian Intellectual Property Office (d) five reproductions of the trade mark, except in the case of a word mark | sentatives registered by Slovenian Intellectual Property Office. However, foreign persons may file an application, perform acts relating to the establishment of the filing date, pay fees in the proceedings before the Office, file copies of first applications when claiming the right of priority under Article 61, and receive notifications by the Office relating to those proceedings, without a representative. In such case foreign persons must communicate to the Office an address for correspondence which is in the territory of the Republic of Slovenia | |||
| Spain | Conversion is particularly regulated by Articles 86, ES-TML and 42, ES-RE | |||
| (a) Application fee: 1. Individual marks: euros 145,47 for each class applied for 2. Collective marks: euros 290,92 for each class applied for Article 86 (2)(a), ES-TML | (a)-(d): within a time limit of two months from receipt of the application for conversation at the Spanish Patents and Trade Mark Office (Oficina Española de Patentes y Marcas) Article 42 (1), ESTML | Natural or legal persons who lack a domicile or a genuine, serious industrial or commercial establishment in the European Community must, as provided by Article 155 (2) of Law 11/1986, of 20 March (the Patent Law), appoint an industrial property agent to represent them Article 56 (2) ESRE | Where conversion of a CTM application is requested: The application is treated as a normal application for a national mark. Where conversion of a registered CTM is requested: The mark is registered without any further examination. | |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| (b) Translation into Spanish of the request for conversion and any other document accompanying the request, where the request and other documents are not already submitted in this language Article 86 (2)(b), ES-TML (c) Where an applicant acts on his own behalf and has no domicile or registered office in Spain, he must elect a domicile in Spain for the purpose of notifications Articles 29 (4) and 86 (2) (c), ES-TLM (d) Four reproductions of the mark if the mark is a figurative mark or contains figurative elements Article 86 (2)(d), ES-TML | This does not, however, apply where the ground for conversion of the CTMR was the surrender or failure to renew it and this occurred during the pendency of a proceeding involving a ground for declaration of invalidity or revocation, provided that the latter was of such a kind that it could affect the protection of the mark in Spain Article 86 (4), ESTML | |||
| Sweden | Conversion is regulated by ß 27, SE-RE | |||
| (a) For an application for registration transmitted to the Patent and Registration Office in accordance with Articles 109 and 110 CTMR: 1. For protection in one class of a mark other than a collective mark: 1,400 SEK (153 euros) 2. For protection in one class of a collective mark: 1,400 SEK (153euros) 3. For protection in one class in addition to the first one: 700 SEK (76euros) | (a) At the time of the filing of the application ß 7, 2nd paragraph, SE-RE | |||
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| Application for division of an application for registration, for each new divided application: 1,400 SEK (153euros) Application for division of a registration, for each new divided registration: 1,400 SEK (153euros) There is no longer an extra fee for a mark containing a figurative element ß 65, SE-TML ß 27, SE-RE (b) The application shall be filed in the Swedish language unless the Registration Authority, in a specific case, admits otherwise Where an annex to an application is in a language other than Swedish, the applicant shall file also a certified translation of the annex, where the Registration Authority so requests ß 7, SE-RE (c) The owner of a registered trade mark who does not have his domicile in the European Economic Area (EEA) needs to have an attorney resident in EEA who is empowered to represent him in all matters relating to the mark Where no such empowered attorney is recorded in the register, the Registration Authority shall request the owner, at his last available address, to rectify the matter within a |
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| determined period, failing which the mark shall be removed from the Register ß 31 (1), SE-TML (d) Where a registration concerns the registration of a figurative mark, according to the practise of the Swedish IP Office one copy is enough Where the mark is requested to be registered in colour, one copy is enough and the same applies to the black and white trade mark applications | ||||
| United Kingdom | Conversion is particularly regulated by Section 10, UK-TMCR | |||
| (a) Application for registration of a trade mark or a series of trade marks: £200 (297euros) Class fee for each class over one: £50 (74euros) UK-FEE (b) Translation of the application into English may be required where the application was not filed in English Section 10 (2), UKTMCR, Rule 72, UK-RULES (c) ex parte cases: an address for service anywhere in the EC, EEA or the Channel Islands, Rule 10 (4), UK-RULES Inter partes cases: an address for service in the United Kingdom unless the Registrar directs otherwise. Rule 10 (5), UK-RULES | (c) Within a period of two months from the date of notice sent by the Patent Office, inviting the applicant to file an address for service Section 10 (2), UK-TMCR, Rule 10 (6), UKRULES | Where the Registrar decides that a request for a conversion application is admissible pursuant to CTMR 108, it shall be treated as an application for the registration of the trade mark under the Act Section 10 (2), UK-TMCR | ||
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| Member State | Procedural steps to be taken (a) Fee (b) Translation requirement (c) Address for service or representative (d) Requirements concerning the number of representations of the mark | Time limit for taking procedural steps referred to in column 1 | Appointment of a local professional representative for the national application resulting from conversion | Examination |
| Bulgaria | Conversion is particularly regulated by Article 72c, BG-TML | |||
| (a) Payment of application fee - individual marks: 200 BGN (102euros) plus 60 BGN (31euros) for each class of goods and services exceeding one Article 4 (1), BG-FEE - collective marks: 400 BGN (204,5euros) plus 120 BGN(61euros) for each class of goods and services exceeding one Article 4 (1), BG-FEE (b) Translation into Bulgarian of the conversion request and its accompanying documents Article 72c (2) (i), BGTML (d) A representation of the mark Article 72c (2) (ii), BGTML | (a) Within two months following the date of receipt of the conversion notification. Article 72c (2), BG-TML (b) Within two months following the date of receipt of the conversion notification. Article 72c (2), BG-TML (d) Within two months following the date of receipt of the conversion notification. Article 72c (2), BG-TML | Persons who have no residence or headquarters in the Republic of Bulgaria shall conduct business with the Patent Office through a local industrial property agent. Article 3 (1), BGTML | ||
| Romania | No provision in Romanian TM Law | |||
