L_2017205EN.01003901.xml
| 8.8.2017 | EN | Official Journal of the European Union | L 205/39 |
COMMISSION IMPLEMENTING REGULATION (EU) 2017/1431
of 18 May 2017
laying down detailed rules for implementing certain provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark
THE EUROPEAN COMMISSION,
Having regard to the Treaty on the Functioning of the European Union,
Having regard to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (1), and in particular Article 17(5b), Article 26(4), Article 30(2), Article 33(4), Article 34(5), Article 39(5), Article 44(9), Article 45(3), the second subparagraph of Article 48(3), Article 48a(1), Article 49(8), Article 50(5), Article 67(3), Article 74b(3), the first subparagraph of Article 85(1a), Article 89(4), Article 90(3), Article 113(6), Article 119(10), the second subparagraph of Article 132(2), Article 147(9), Article 148a(2), Article 149(2), Article 153a(6), Article 154(8), Article 158(4), Article 159(10) and Article 161(6) thereof,
Whereas:
| (1) | Council Regulation (EC) No 40/94 (2), which was codified as Regulation (EC) No 207/2009, created a system specific to the Union for the protection of trade marks to be obtained at the level of the Union on the basis of an application to the European Union Intellectual Property Office (‘the Office’). |
| (2) | Regulation (EU) 2015/2424 of the European Parliament and the Council (3) aligns the powers conferred upon the Commission under Regulation (EC) No 207/2009 to Articles 290 and 291 of the Treaty on the Functioning of the European Union. In order to conform with the new legal framework resulting from that alignment, certain rules should be adopted by means of implementing and delegated acts. The new rules should replace the existing rules which are laid down in Commission Regulation (EC) No 2868/95 (4) and aim at implementing Regulation (EC) No 207/2009. |
| (3) | In the interest of clarity, legal certainty and efficiency, and with a view to facilitating the filing of EU trade mark applications, it is of essential importance to specify, in a clear and exhaustive manner while avoiding unnecessary administrative burdens, the mandatory and optional particulars to be contained in an application for an EU trade mark. |
| (4) | Regulation (EC) No 207/2009 no longer requires the representation of a mark to be graphic, as long as it enables the competent authorities and the public to determine with clarity and precision the subject matter of protection. It is therefore necessary, in order to ensure legal certainty, to clearly affirm that the precise subject matter of the exclusive right conferred by the registration is defined by the representation. The representation should, where appropriate, be complemented by an indication of the type of the mark concerned. It may be complemented by a description of the sign in appropriate cases. Such an indication or description should accord with the representation. |
| (5) | Moreover, in order to ensure consistency in the process of filing an EU trade mark application and in order to enhance the effectiveness of clearance searches, it is appropriate to establish general principles to which the representation of every mark must conform, as well as lay down specific rules and requirements for the representation of certain types of trade mark, in accordance with the trade mark's specific nature and attributes. |
| (6) | The introduction of technical alternatives to graphic representation, in line with new technologies, derives from the necessity of modernisation, bringing the registration process closer to technical developments. At the same time, the technical specifications for filing a representation of the trade mark, including representations filed electronically, should be laid down with a view to ensuring that the EU trade mark system remains interoperable with the system established by the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (5) (Madrid Protocol). In accordance with Regulation (EC) No 207/2009, and for the sake of increased flexibility and quicker adaptation to technological advances, it should be left to the Executive Director of the Office to lay down the technical specifications for marks filed electronically. |
| (7) | It is appropriate to streamline proceedings so as to reduce administrative burdens in the filing and process of priority and seniority claims. It should therefore not be necessary any more to submit certified copies of the previous application or registration. Furthermore, the Office should no longer be required to include a copy of the prior trade mark application in the file in the case of a priority claim. |
| (8) | Following the abolition of the requirement of a graphic representation of a trade mark, certain types of trade marks can be represented in electronic format and accordingly, their publication using conventional means is no longer suitable. In order to guarantee the publication of all the information concerning an application, which is required for reasons of transparency and legal certainty, access to the representation of the trade mark by way of a link to the Office's electronic register should be recognised as a valid form of representation of the sign for publication purposes. |
| (9) | For the same reasons, it should also be permissible for the Office to issue certificates of registration in which the reproduction of the trade mark is substituted by an electronic link. Furthermore, for certificates issued after the registration, and to cater for requests made at a time when registration particulars may have changed, it is appropriate to provide for the possibility of issuing updated versions of the certificate, where relevant subsequent entries in the register are indicated. |
| (10) | Practical experience in applying the former regime revealed the need of clarifying certain provisions, in particular in relation to partial transfers and partial surrenders, in order to ensure clarity and legal certainty. |
| (11) | In order to ensure legal certainty, while keeping a certain level of flexibility, it is necessary to establish a minimum content of the regulations governing the use of EU Collective marks and of EU Certification marks submitted pursuant to Regulation (EC) No 207/2009, with the purpose of enabling market operators to avail themselves of this new type of trade mark protection. |
| (12) | Maximum rates for representation costs incurred by the successful party to proceedings before the Office should be specified, taking into account the need to ensure that the obligation to bear the costs may not be misused, inter alia, for tactical reasons by the other party. |
| (13) | For reasons of efficiency, electronic publications by the Office should be allowed. |
| (14) | It is necessary to ensure an effective and efficient exchange of information between the Office and the authorities of the Member States in the context of administrative cooperation, taking appropriate account of the restrictions to which the inspection of files is subject. |
| (15) | The requirements concerning requests for conversion should ensure a smooth and effective interface between the EU trade mark system and the national trade mark systems. |
| (16) | In order to streamline proceedings before the Office, it should be possible to limit the submission of translations to those parts of documents that are relevant to the proceedings. For the same purpose, the Office should be authorised to require proof that a translation corresponds to the original only in the event of doubt. |
| (17) | For reasons of efficiency, certain decisions of the Office in relation to oppositions or applications for the revocation or a declaration of invalidity of an EU trade mark should be taken by a single member. |
| (18) | Due to the accession of the Union to the Madrid Protocol, it is necessary that the detailed requirements governing the procedures concerning the international registration of marks be entirely consistent with the rules of that Protocol. |
| (19) | The detailed rules laid down in this Regulation relate to provisions of Regulation (EC) No 207/2009 that have been amended by Regulation (EU) 2015/2424 with effect from 1 October 2017. It is therefore necessary to defer the applicability of those rules until the same date. At the same time, certain proceedings initiated before that date should continue to be governed until their conclusion by specific provisions of Regulation (EC) No 2868/95. |
| (20) | The measures provided for in this Regulation are in accordance with the opinion of the Committee on Implementation Rules, |
HAS ADOPTED THIS REGULATION:
TITLE I
GENERAL PROVISIONS
Article 1
Subject matter
This Regulation lays down rules specifying:
| (a) | the details to be contained in an application for an EU trade mark to be filed at the European Union Intellectual Property Office (‘the Office’); |
| (b) | the documentation required for claiming the priority of a previous application and for claiming seniority, and the evidence to be filed for claiming an exhibition priority; |
| (c) | the details to be contained in the publication of an application for an EU trade mark; |
| (d) | the content of a declaration of division of an application, how the Office has to process such a declaration, and the details to be contained in the publication of the divisional application; |
| (e) | the content and form of the certificate of registration; |
| (f) | the content of a declaration of division of a registration and how the Office has to process such a declaration; |
...
