Decisions and Communications of the President of the Office
| Author | Office for Harmonization in the Internal Market |
| Profession | European Commission |
| Pages | 303-388 |
Page 303
THE PRESIDENT OF THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS),
Having regard to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, in particular Article 119 (2) (a) thereof,
Having regard to Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (hereinafter referred to as 'the Implementing Regulation'), in particular Rules 6 (4), 8 (4) and 28 (4) thereof,
Whereas the information contained in the originals of the documents to be submitted pursuant to Rule 6 (1) of the Implementing Regulation to support a claim of priority and pursuant to Rule 8 (1) and Rule 28 (1) (f) of the Implementing Regulation to support a claim of seniority, is available to the Office from an accurate photocopy of such documents,
HAS ADOPTED THE FOLLOWING DECISION:
Instead of filing the originals of documents in support of a priority claim issued by the authority which received the previous application as provided for in Rule 6 (1) of the Implementing Regulation, accurate photocopies of such documents may be filed. To the extent that the originals of the documents contain a representation of the mark in colour, the photocopy shall also be in colour.
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Instead of submitting a copy of the earlier registered trade mark certified by the competent authority to be an exact copy of the registration as provided for in Rule 8 (1) and Rule 28 (1) (f) of the Implementing Regulation, an accurate photocopy of a document issued by the competent registration authority relating to the earlier registration may be submitted. Where that document contains a reproduction of the mark in colour, the photocopy shall also be in colour.
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When a photocopy of an original document is submitted pursuant to paragraph 1, it shall be accompanied by a statement by the applicant or his representative that the information contained in the photocopy corresponds to the current status of the relevant registration at the time of submitting the photocopy, except when the original document has been issued not later than six months before the date on which the photocopy was submitted. Page 304
This Decision shall enter into force on 7 March 1996. It shall be published in the Official Journal of the Office.
Done at Alicante, 5 March 1996.
Jean-Claude Combaldieu
President Page 305
THE PRESIDENT OF THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS),
Having regard to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, and in particular Article 119 (2) (a) thereof,
Having regard to Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark, hereinafter referred to as "the Implementing Regulation", and in particular Rule 55 (2) thereof,
Whereas Rule 55 (1) of the Implementing Regulation provides that any decision, communication or notice from the Office shall indicate the department or division of the Office and the name or names of the responsible officials and must be signed by the responsible official or officials or carry a printed or stamped seal;
Whereas Rule 61 (2) (a) of the Implementing Regulation provides that notifications may be made by telecopier in accordance with Rule 65 of the Implementing Regulation, and under Rule 61 (1) of the Implementing Regulation notification shall be made by communicating an original of the document concerned or a copy thereof;
Whereas the Office's trade mark administration system EUROMARC is an electronic system without paper support and notification of decisions, communications and notices by telecopier is made by transmitting the original document produced electronically directly from the workstation of the responsible official via the telecopy server to the destination telecopier without the document being printed, and whereas is it not technically possible to sign such communications before their electronic dispatch;
Whereas it is therefore necessary to determine with regard to such transmissions by tele- copier the manner of indicating the department or division of the Office and the name of the responsible official or officials,
HAS ADOPTED THE FOLLOWING DECISION:
Where any decision, communication or notice from the Office is transmitted by telecopier, it shall be a sufficient identification of the department or division of the Office and of the responsible official or officials if the denomination of the department or division is stated in the letterhead and if at the end of the decision, communication or notice, the full name of the responsible official or officials is indicated. The indication of the name or names may be accompanied by the facsimile of the signature of the responsible official or officials.
This Decision shall be published in the Official Journal of the Office. Page 306
This Decision shall enter into force on the day following its adoption. It shall be applied as from 1 May 1996.
Done at Alicante, 1 April 1997
Jean-Claude Combaldieu
President Page 307
THE PRESIDENT OF THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS),
Having regard to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (hereinafter referred to as 'the Regulation'), establishing the Office for Harmonization in the Internal Market (Trade Marks and Designs), and in particular Article 119 (2) (a) thereof,
Having regard to Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs), and in particular Article 5 (2) and Article 8 (2) thereof,
Having regard to Commission Regulation (EC) No 2246/2002 of 16 December 2002 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) in respect of the registration of Community designs, hereinafter referred to as « Commission Regulation No 2246/2002 », in particular Article 5 (2) and Article 7 (2) thereof,
Whereas it is necessary to create a system of current accounts to facilitate the payment of fees and charges to the Office,
HAS ADOPTED THE FOLLOWING DECISION:
Payments of fees and charges to the Office may be made through current accounts opened at the Office under the terms and conditions of this Decision.
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In accordance with the present Decision, the following may be holders of current accounts:
(a) natural or legal persons who, in accordance with Article 5 of the Regulation, may be proprietors of Community trade marks,
(b) persons who, in accordance with Article 89 of the Regulation, may represent third par- ties before the Office,
(c) associations of representatives.
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The persons and associations specified in paragraph 1 may not hold more than one current account.
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The application for opening a current account must be made in writing and must be sent to the following address: Page 308
Office for Harmonization in the Internal Market (Trade Marks and Designs)
Financial Department
Avenida Europa, 4
E - 03080 Alicante
Fax : 00 - 34 - 96 513 9113
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(deleted)
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The application for the opening of a current account must indicate in particular the name of the applicant, his profession or activity, his address and telephone and fax numbers.
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This application must be accompanied by a declaration signed by the applicant stating his acceptance of all the terms and conditions laid down in the present Decision and all posterior modifications hereto, and authorizing the President of the Office or his representative to debit from the current account, by standing order, all the fees and charges due to the Office.
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The standing order to debit all the fees and charges due is valid for the payment of all fees and charges which become due to the Office in respect of all applications, requests and procedural acts accomplished before the Office
(a) by the holder of the current account, or
(b) by the representative of the holder of the current account, provided he is duly appointed and authorized, save where Article 6 (2) applies.
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The Office shall provide the interested parties with application forms for the opening of a current account.
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The holder of the current account must deposit at the Office an initial provision of not less than 3000 EURO.
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After receipt of the above-mentioned payment, the Office shall communicate the opening of the account to the interested party and inform him of the account number.
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The current account shall become operational only when this initial deposit has been made.
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The current account shall be held in EURO. All provisions must be made in EURO.
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All provisions must be made by bank transfer.
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It falls to the account holder to ensure in due time that there are always sufficient pro- visions in the account.
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(deleted)
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All bank charges incurred in any deposit operation for the current accounts shall be borne by the respective holders. Page 309
Where a party to a proceedings before the Office or his representative requests that a current account of which he or she is not the holder and for which he or she is not entitled to dispose of pursuant to Article 3 (5) (b) be debited with a particular fee, such request shall be disregarded by the Office, except where he or she furnishes written evidence to the Office, before the date on which payment of the fee is deemed to have been made in accordance with Article 7, that the holder of the current account consents to the debit of that fee.
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From the day on which the account is opened, the Office may debit, according to the development of the procedures concerned and insofar as there are sufficient funds in the account, all fees and charges due within the limits of the aforementioned procedures, and each time a payment date will be accorded, always respecting the time limits laid down in the conditions of Article 7 of the present Decision.
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However, the Office shall not debit the current account for a particular fee or charge if a specific indication is received in writing from the holder stating that the account may not be used for the payment of such a fee or charge.
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The amount debited shall be the amount in EURO of the fee or charge in question according to the tariffs in force when the payment is deemed to have been made.
With the carrying out of the debit of the current account the payment of the fee or charge shall be deemed to have been made:
(a) for the basic fee for the application of a Community trade mark: on the last day of the time limit provided for payment; if the applicant expressly requests debiting at the time of receipt of the application, on the day of receipt of the application;
(b) for the class fee for each class of goods and services beyond the third class for the application of a Community trade mark: on the day on which the Office determines the number of classes for which a class fee must be paid, when and to the extent that there is agreement between the Office and the applicant;
(c) for the fees (including class fees) for the registration of a Community trade mark: on the last day of the time limit provided for payment; if the applicant expressly requests debiting at an earlier point in time, on the day when the corresponding communication is received;
(d) for the fees for the renewal of a Community trade mark (including class fees) or the renewal of a registered Community design: on the day on which the request for renewal is made;
(e) for the registration fee, additional registration fee, publication fee and additional publication fee in respect of an application for a registered Community design, if no deferment of publication is requested: on the day on which the application for a registered Community design was filed; Page 310
(f) for the registration fee, additional registration fee, deferment fee and additional deferment fee in respect of an application for a registered Community design, if deferment of publication is requested: on the day on which the application for a registered Community design was filed;
(g) for the publication fee and additional publication fee in case of deferment: on the day which is three months before the day on which the period for deferment expires, or on the day on which the holder requests the earlier publication pursuant to Article 15 (1) of Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs, whichever is earlier;
(h) for all other fees and for all charges: on the day of receipt of the application, declaration, appeal, opposition or request for which the fee is due.
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If, at the point in time on which the Office proceeds to debiting the current account, the account lacks sufficient funds to cover the payment of the full amount of the fee(s) or charge(s) to be debited, the holder of the current account shall be notified.
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If the current account is provided with sufficient funds within a month after receipt of the notification referred to in the preceding paragraph, thus allowing payment of the fees concerned and of the administrative charges provided for in paragraph 3 to be made, the Office shall automatically debit the corresponding amount from the account, and the payment shall be considered to have been made on the day on which it was initially due.
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The administrative charges referred to in paragraph 2 shall come to 20 % of the total of the late fee, and shall in no case exceed the maximum of EURO 500 nor the minimum of EURO 100.
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The administrative charge referred to in paragraph 2 shall not be payable if the holder of the current account provides evidence to the Office that the payment to provide the current account with sufficient funds was initiated, in the manner provided for in Article 8 (3) (a) (i), (ii) or (iii) of Commission Regulation No 2869/95 or Article 7 (3) (a) (i), (ii) or
(iii) of Commission Regulation No 2246/2002, before the point in time on which the Office proceeded to debit the current account.
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The holder of the current account may request at the Office to be given access to his statements of account through the Internet. In this case the Office shall provide the holder with a password for restricted access to the account statement. Otherwise the Office shall send on a regular basis, generally once per week, a written statement of accounts specifying the operations carried out in the period concerned.
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Any irregularity or mistake in the operations carried out shall be notified to the Office by the holder of the account within two weeks, to be counted from the date of receipt of the written statement of accounts or, where access to the account statement through the Internet has been granted, from the date on which the operation was carried out. Any irregular or wrongful operation shall be reversed by the Office, with effect of the date on which the operation was carried out.
If the Office considers that an error has been made in the debiting of the standing order, it shall make a reverse of accounts backdated to the day on which the payment was made. Page 311
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The holder of a current account may close the said account by written notification to the Office. The standing order will cease to have an effect as from the date of receipt of the aforementioned notification.
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The current account shall be deemed to be closed if the holder cancels or suspends the standing order. The Office shall settle the account.
The Office reserves the right to close the current account by written notification to the holder, in particular where the use made of the current account was not in accordance with the terms and conditions laid down in this Decision. The closing of the account shall come into effect three months after the day on which this notification is sent.
The balance of the current account shall be refunded to the holder.
The present decision shall be published in the Official Journal of the Office.
The present Decision shall enter into force on this day.
Done at Alicante, 11 January 1996
Jean-Claude Combaldieu
President Page 312
The establishment and administration of current accounts is governed by Decision EX-96-1 of the President of the Office of 11 January 1996 concerning current accounts (OJ OHIM 1996 p. 49) as amended by Decision EX-96-7 of the President of the Office of 30 July 1996 (OJ OHIM No 10/96). The original decision was amended to remove some uncertainties and also in order to provide for a treatment of holders of current accounts which is no less favourable than that accorded to those paying by other means. Decision EX-96-1 as amended will apply as from 1 April 1996, i.e. from the first day on which the Office formally began treating Community trade mark applications.
Current accounts permit applicants and their representatives to make payment of all fees or charges payable to the Office by agreeing that the current account be automatically debited.
The purpose of this Communication is to inform the holders of current accounts about details of the administration of current accounts and the debiting of fees and charges.
The system of current accounts established by Decision No. EX-96-1 as amended is an automatic debiting system. Pursuant to Article 6 (1) of Decision EX-96-1 all fees and charges due are automatically debited from the current account of the party to the proceedings before the Office. Where a professional representative within the meaning of Article 89 of the Community Trade Mark Regulation (CTMR) acts on behalf of the party to the proceedings, fees and charges are debited from the current account of the representative if the representative has established such account. If the representative does not have a current account, the automatic debiting system cannot be used even if the party to the proceedings before the Office has established a current account.
When the holder of a current account wishes to exclude the use of the current account for a particular fee or charge he must so inform the Office in writing (Article 6 (2) of Decision EX-96-1) at the same time as the application etc. is filed which gives rise to the particular fee or charge or, when a time limit for payment exists, prior to the expiry of such time limit.
The automatic debiting system will, as explained below, always ensure timely payment if the current account is provided with sufficient funds. Even if the current account does not contain sufficient funds for payment of a particular fee at the time when debit instructions are given, the holder of the current account can still ensure timely payment of the fee if he fills up the account within a period of one month after receiving a corresponding communication from the Office and pays the appropriate administrative charge (20 % of the unpaid fee, subject to a maximum of 500 ECU and a minimum of 100 ECU).
Pursuant to Article 9 of Decision EX-96-1 the Office will issue at least once a month, and where appropriate more frequently, a statement of operations carried out. Thus, the holder of the current account will always be informed of the status of his account and any need to fill up the account, as he is obliged to do under Article 4 (3) of Decision EX-96-1. Page 313
In applying Article 7 of Decision EX-96-1, fees and charges are debited at the point in time when the Office determines that a particular fee or charge is owed. This debiting date will never be earlier than the date determined pursuant to Article 7 of Decision EX-96-1. Article 7 of Decision EX-96-1 lays down the rules concerning the date on which a particular fee or charge is deemed to have been paid. These rules are as follows.
The basic application fee (975 ECU for an individual mark and 1,675 ECU for a collective mark) will be debited from the current account on the last day of the one month period provided for in Article 27 CTMR. That is, the fee will be debited one month after the actual date of receipt of the application at the Office or, when the application has been filed with a national office or the Benelux Trade Mark Office, within one month from the filing at such office.
Where the application is withdrawn prior to the expiry of the period of one month, the basic fee will not be debited.
Where the applicant, in order to accelerate the handling of his application, wishes the basic fee to be debited on the date of receipt of the application, he must make an express declaration to that effect in the application. The marking of the appropriate box on the application form authorising withdrawal from a current account will be taken as authorising withdrawal at the end of the one month period.
Class fees for any class beyond the third class (200 ECU for an individual mark and 400 ECU for a collective mark) will be debited when and to the extent that the Office, in the course of the examination of the application, establishes agreement with the applicant on the number of classes into which the goods or services covered by the application fall. This principle will be implemented in the following manner.
Where the applicant has classified the goods and services and the Office agrees with the applicant on the number of classes into which the goods or services fall (even though other differences concerning classification matters may remain), the Office will note this on the file and debit the additional class fees accordingly. The applicant will be informed of the debiting when he receives the account statement provided for in Article 9 of Decision EX-96-1.
Where the application is withdrawn in part prior to the actual debiting of additional class fees, no additional class fees will be debited for the classes for which the application is withdrawn. Page 314
Where the applicant has classified the goods and services and the Office disagrees with the applicant on the number of classes into which the goods or services fall, the Office will send a communication to the applicant informing him accordingly. The communication will contain a notice that the Office will proceed to a decision refusing the application with regard to those goods or services as to which there is no agreement as to the class or classes into which they fall if the applicant does not agree to the classification as proposed by the Office or does not respond within a period specified by the Office (generally two months from notification of the communication). This is an Office action under Rule 9 (3) (a) of the Implementing Regulation. This Office action may contain other classification issues in addition to issues relating to the numbers of classes.
Where the applicant informs the Office, within the time limit specified by the Office, that he agrees with the Office, the Office will debit any additional class fees on the date when the corresponding communication is received by the Office. The applicant will be informed of the debiting by the account statement issued under Article 9 of Decision EX-96-1.
Where the applicant informs the Office, within the time period specified by the Office, that he does not agree with the Office on the number of classes into which the goods or services fall, and the Office accepts the applicant's position, it will so inform the applicant and any additional class fees will be debited on the date when the corresponding communication is notified to the applicant.
If the Office does not accept the applicant's position or accepts it only in part, or where the applicant does not answer within the time limit specified, the Office will decide that the application is refused for those goods and services in respect of which there is no agreement as to the class or classes into which they fall, applying Rule 9 (4) of the Implementing Regulation. Upon the notification of that decision the Office will debit any additional class fees as to which there is agreement with the applicant. (Example: The applicant claims five classes, the Office considers that the goods or services fall into six classes. The applicant continues to disagree. At the end of the exchange between the Office and the applicant the Office decides that the application falls into six classes and that the application is refused for those goods and services which fall into the sixth class. The current account will be debited for two additional classes.) The decision may also deal with other classification issues. The decision of (partial) refusal may be appealed.
Where the applicant has not classified the goods and services, the Office will make the classification, inform the applicant of the classification and also inform him of any additional class fees that have to be paid (Rule 9 (3) (a) of the Implementing Regulation). Thereafter, the procedure described above applies.
The registration fee (1100 ECU basic fee and 200 ECU class fee for each class beyond the third for an individual mark, 2200 ECU basic fee and 400 ECU class fee for each class beyond the third for a collective mark) will be debited at the end of a period of two months after the applicant has been notified that the mark is registrable (Rule 23 (2) of the Implementing Regulation).
If the applicant wishes to accelerate the procedure, he may at any time after receiving that notification request the Office to proceed to registration and instruct the Office to debit the current account immediately. The Office will then debit the current account upon receipt of such request. Page 315
If the applicant does not wish the automatic debiting to take place at the end of the period of two months, he must, before the expiry of the period of two months, expressly declare in writing to the Office that the current account may not be used for the payment of the registration fee (Article 6 (2) of Decision EX-96-1). The debiting of the registration fee may otherwise be avoided only by withdrawing the application within the two months period.
The renewal fee (2500 ECU basic fee and 500 ECU class fee for each class beyond the third for an individual mark, 5000 ECU basic fee and 1000 ECU class fee for each class beyond the third for a collective mark) will be debited on the last day of the time limit of six months provided for in Article 47 (3) CTMR, i.e. on the last day of the month in which protection ends.
The opposition fee (350 ECU) will be debited on receipt of the notice of opposition.
The fee for the application for revocation or declaration of invalidity (700 ECU) will be debited on receipt of the application.
The appeal fee (800 ECU) will be debited on receipt of the notice of appeal.
The following fees will be debited on receipt of the respective application or request:
- fee for the application for restitutio in integrum;
- fee for conversion of the Community trade mark application or registration into a national trade mark application;
- fee for registration of a transfer or for the registration or cancellation of a licence or another right;
- fee for the alteration of the representation of a trade mark;
- fee in the alteration of a registered Community trade mark;
- fee for the issue of copies, inspection of files or communication of information;
- fee for the review of the determination of the procedural costs to be refunded.
Charges as provided for in Articles 3 of the Fees Regulation will be debited on the date of receipt of the request for which the charge is incurred (Article 4 of the Fees Regulation). Page 316
Whenever a fee is to be debited according to the procedures described above, the necessary internal instructions will be given to the financial department of the Office. There may be situations where the instructions to debit a current account may be given after the dates indicated above, but in no instance before these dates. Where the instruction to debit the current account is given after that date, the date on which the payment will be deemed to have been made will be the date following from the application of Article 7 of Decision EX-96-1 as explained under III., provided that the Office is actually able to debit the fee, that is to say when there are sufficient funds at the date of debiting or where the current account is filled up in accordance with Article 8 of Decision EX-96-1. Thus, even when there were sufficient funds at the date when the fees are deemed to have been paid, as determined under Article 7 of Decision EX-96-1, the holder of the current account must provide sufficient funds until the date on which the fee is actually debited, or fill up the current account and pay the administrative charge.
If at the time where instructions are given to debit the current account there are sufficient funds in the current account, the Office will debit the current account accordingly irrespective of whether sufficient funds were available at the time the respective fee is deemed to have been paid. No rights will be lost in this situation.
Where, at the time instructions are given to debit the current account, the current account lacks sufficient funds to cover the payment of a particular fee, the holder of the current account will be invited by the Office to replenish the account within a month after receipt of that notification, subject to a surcharge of 20 % of the total of the late fee, with a maximum of 500 ECU and minimum of 100 ECU (Article 8 (3) of Decision EX-96-1). If the current account is filled up within that time limit, the payment will be considered to have been made on the date on which the fee would normally have been deemed to have been paid, namely on the date which follows from the application of the rules explained above under III. Where the account is provided with sufficient funds in time, the debiting will take place immediately upon receipt of such funds, and not necessarily at the end of the period of one month.
Where the current account is not replenished in time, payment will be deemed not to have been made, and any rights depending on timely payment will be lost.
Where several debiting transactions are carried out on the same day and the funds in the current account on that day are sufficient to cover some but not all payments, the rules explained above on insufficient funds will apply only to those debiting transactions on that day for which it is determined that there are insufficient funds in the current account. Thus, there is no system for according preference to any particular type of transaction or for allocating funds as between various transactions of the same type. Page 317
As concerns the filling up of current accounts, Article 4 (4) of Decision EX-96-1 provides that Article 8 (1) and (3) of the Fees Regulation are applicable mutatis mutandis. As regards the filling up of current accounts pursuant to Article 8 (2) of Decision EX-96-1, the application of Article 8 of the Fees Regulation means that, in addition to any administrative charge payable under Article 8 (3) of Decision EX-96-1, the surcharge for late payment of fees provided for in Article 8 (3) of the Fees Regulation must be paid in the situations covered in Article 8 (3) of the Fees Regulation, i.e. when the payment is received after the expiry of the one month period but the instructions to effect the payment were given within that period but not earlier than ten days before its expiry.
It should be noted that the rules on insufficient funds provided for in Decision EX-96-1 and explained above apply only to payment of fees. Transactions giving rise to charges as provided for in Article 3 of the Fees Regulation will be carried out only if there are sufficient funds available at the time the transaction is requested.
Jean-Claude Combaldieu
President Page 318
The purpose of this Communication is to explain the practice of the Office in examining applications for registration of three-dimensional marks.
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In accordance with Rule 3 (4) of the Implementing Regulation, applicants applying for registration of three-dimensional marks must make a corresponding indication in the application. The application form prepared by the Office provides a box that is to be checked in these cases. In addition a representation of the mark must be supplied. The representation in photographic or graphic form may contain up to six different perspectives of the mark.
When the application does not contain a corresponding indication and when it is not clear from the circumstances that registration of a three-dimensional mark is requested, the Office will treat the application as a request for a two-dimensional "figurative mark".
When the box "figurative mark" has been checked in the application form or when the application contains a corresponding indication, the Office will treat the application as requesting registration of the mark as a two-dimensional mark.
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Three-dimensional marks may, in addition to the three-dimensional shape itself, also contain verbal or figurative elements applied to that shape.
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An application requesting registration of a three-dimensional mark may also claim colour at the same time, by making a corresponding indication to that effect, as is provided for in Rule 3 (5) of the Implementing Regulation. In these cases, the colours making up the mark must be indicated. The representation must also be in colour.
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Pursuant to Rule 3 (3) of the Implementing Regulation, the applicant, when requesting registration of a three-dimensional mark, may also provide a description of the mark. Such a description is not mandatory but may be useful because it may permit the Office to determine the nature of the mark. The Office will object to a description only if it obviously is at variance with the representation of the mark
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In examining three-dimensional marks for absolute grounds of refusal, primarily the provisions of Article 7 (1) (b), (c), (d), and (e) of the Community Trade Mark Regulation are involved. Under these provisions, a mark may only be refused if it consists exclusively of one of the elements referred to in these provisions and the ground of refusal exists in relation to the goods or services for which registration is requested.
Accordingly, the Office will reject, on one or several of the grounds referred to above, three-dimensional marks consisting exclusively of standard or ordinary containers (bottles, boxes, etc.) or the standard or usual shape of the goods for which registration is sought. Where the three-dimensional mark contains other elements (verbal or figurative elements or colour) and when these other elements alone or in combination with the three- dimensional shape are sufficient to render the mark registrable, the Office will not refuse registration. Page 319
As in cases of word marks and figurative marks consisting of several elements, some or all of which by themselves would not be registrable, the Office, when accepting such combination three-dimensional marks, will not point out to the applicant, or to the public when publishing the mark, the basis for accepting the application.
Consequently, when such combination three-dimensional marks are published or registered, this cannot be taken as an indication that the Office would have accepted the three- dimensional shape itself as registrable.
Jean-Claude Combaldieu
President Page 320
THE PRESIDENT OF THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS),
Having regard to Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (hereinafter referred to as 'the Implementing Regulation'), and in particular Rule 59 (4) thereof,
Having regard to Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community design, in particular Article 45 (4) thereof,
Whereas it is necessary to determine the amounts and advances for expenses to be paid to witnesses and experts, pursuant to paragraphs 1, 2 and 3 of Rule 59 of the Implementing Regulation (IR), when evidence is taken before the Office;
Whereas the procedure for reimbursing the amounts to be paid to witnesses and experts shall be conducted in accordance with the provisions of Regulation No CB-1-95 of the Budget Committee of the Office of 7 July 1995 laying down the financial provisions applicable to the Office (OJ OHIM 1996, 809) and of Regulation No CB-1-96 of the Budget Committee of the Office of 27 February 1996 laying down detailed rules for the implementation of certain provisions of the Financial Regulation of 7 July 1995 (OJ OHIM 1996, 881),
HAS ADOPTED THE FOLLOWING DECISION:
This decision determines the amounts which experts or witnesses may claim
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in proceedings concerning Community trade marks in accordance with Rule 59 (2), (3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark;
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in proceedings concerning Community designs in accordance with Article 45 (2), (3) of Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs.
(deleted) Page 321
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The travel expenses of witnesses and experts for an outward and return journey shall be calculated on the basis of the shortest route between their place of residence or place of business and the place where the evidence is taken. These expenses shall amount to:
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the cost of a first-class rail fare plus all the usual supplements:
- the cost of seat reservations and transport of necessary luggage,
- supplements for special fast trains,
- supplements for sleeping accommodation, where the journey includes not less than six hours of night travel between 22.00 and 07.00, in a double sleeper.
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the cost of an economy class air fare where the total distance by rail exceeds 800 km or where the route includes a sea-crossing;
Reimbursement shall under no circumstances exceed the expenses really incurred by the witness or expert and shall be subject to the presentation of the relevant tickets.
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the cost of a first-class rail fare, excluding sleeping accommodation and all other supplements, where a witness or expert uses his own car. This shall be permitted provided that the use of this means of transport does not cause the period of time envisaged for hearing the opinions by experts or examining the witnesses to be prolonged.
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The subsistence expenses of witnesses and experts shall amount to 141,30 euro per day.
Where the length of the visit requested is less than 24 hours, the above-mentioned amount shall be reduced by 50%.
Where the length of the visit requested is more than 24 hours, an additional amount shall be granted:
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equal to the above-mentioned amount for each period of 24 hours;
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equal to half of the above-mentioned amount for each period equal to or less than 12 hours;
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equal to the above-mentioned amount for each period of more than 12 hours.
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The length of the visit requested, within the meaning of this Article, includes both the time required for the taking of evidence and the return journey to and from the seat of the Office.
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The compensation for loss of earnings granted to witnesses shall amount to 120.05 euro per day.
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Where the total length of the visit requested of the witness is more than 24 hours, addi-tional compensation of a sum equal to the above-mentioned amount shall be payable for each further period of 24 hours or fraction thereof.
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The length of the visit requested, within the meaning of this article, includes both the time required for the taking of evidence and the return journey to and from the seat of the Office. Page 322
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The amount of the fees payable to experts shall be equal to an hourly rate of a maxi-mum of 110.68 euro.
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The Office shall conclude a contract for the drawing up of an expert report which shall specify the purpose of the expert opinion and the total amount of the fees payable to the expert.
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Where a witness or expert is summoned during proceedings before the Office, he shall receive, in addition to the summons, a travel order signed by the competent budget author-izing officer detailing the amounts allocated pursuant to the provisions set out in Article 3 and accompanied, where appropriate, by a form for requesting the payment of an advance for the expenses in question.
The form for requesting the payment of an advance must then be returned to the Office within the specified time limit.
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The compensation for loss of earnings or the fees referred to in Articles 4 and 5 shall be paid to the witnesses or experts upon request.
The aforementioned payments as well as the payment of any travel and subsistence expenses still owed shall be effected once the witness or expert has fulfilled his duties.
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This decision shall not be without prejudice to the Financial Regulation of the Office adopted pursuant to Article 138 of the Community Trade Mark Regulation.
This decision shall enter into force on the day following its publication in the Official Journal of the Office.
Done at Alicante, 12 January 1999
Jean-Claude Combaldieu
President Page 323
Until now, receipts for Community trade mark (CTM) applications, issued in accordance with Rule 5 of the Implementing Regulation (IR), have indicated the date of actual reception of the application by the Office, but have not contained indications on the filing date of the application. The filing date accorded by the Office, has been issued by a separate letter to the applicant, or his representative, after having verified that the application com- plies with all the requirements pursuant to Article 26 CTMR and, in particular, the payment of the basic application fee.
After having consulted the international non-governmental organizations, with whom the Office cooperates, the Office has decided to merge these two operations. From the end of June 1998, the receipt also contains a "provisional" filing date attribution.
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Immediately upon receipt of the application, it is checked whether the minimum requirements for according a filing date, other than the payment of the basic application fee, are complied with.
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If that is the case, the receipt issued by the Office, within a few days after filing the application, will state that the date of receipt is also the filing date under Article 27 CTMR, provided that the basic application fee is paid within one month of the date of receipt of the application. Where the application has been filed through a national office, pursuant to Article 25(1)(b) CTMR, the relevant date of receipt is the date of receipt by the national office.
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If the basic fee is paid in time, this "provisional" filing date will automatically become the "definitive" filing date.
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Where payment is made other than by a debit to a current account i.e. by cheque or money transfer, the Office will bank the cheque or its account will be credited with the money received. The applicant or his representative will not be informed that the payment has been made on time.
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Current accounts will be debited in accordance with current practice i.e. generally at the end of a period of one month of the date of filing the application unless the applicant has requested an immediate debit. The applicant or his representative will be informed of the debit, in the usual manner, by the receipt of a statement on the account. However, the Office will now no longer send a separate filing date attribution letter.
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If the basic fee is not paid in time, the Office will issue a notification pursuant to Rule 9 (1) IR, and the consequence will be that the CTM application will receive a later filing date or no filing date at all. Page 324
However, where the applicant or his representative maintains a current account, and that account lacks sufficient funds at the time of the debit, the Office will first invite the holder of the current account to replenish the current account within one month of receipt of that communication (Article 8 of Decision No EX-96-1 of the President of the Office, OJ OHIM No 1/1996, p. 49, as amended by Decision No EX-96-7, OJ OHIM No 10/1996, p. 1455), and will issue the notification pursuant to Rule 9 (1) IR only where the current account has not been replenished accordingly.
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If the examination referred to under point 1 reveals that the elements referred to in Article 26 (1) CTMR, namely a request, information identifying the applicant, a list of goods and services and a representation of the mark, are not all present, or there are problems in this regard, the receipt will, as was previously the case, remain silent on the attribution of the filing date. A notification pursuant to Rule 9 (1) IR will be issued subsequently.
The new Office practice will not delay the issuing of receipts; rather, these will continue to be issued generally within five working days of receipt. The new practice will facilitate the task of the applicants or their representatives without affecting the procedural guarantees under Rule 9 IR. It will also facilitate the task of the Office, since in the overwhelming majority of cases the basic application fee is paid on time so that a separate filing date communication will not be required.
Jean-Claude Combaldieu
President Page 325
Both in ex parte and in inter partes cases, parties occasionally file original items such as catalogues or invoices. Attention is drawn to the fact that these documents become part of the files of the respective Community trade mark application or registration, in the same way as any other document, and therefore cannot be returned to the person who has submitted that document. Requests to that end will be refused by the Office.
The Office accepts all documents in the form of originals or photocopies or telecopy transmissions (cf. Rule 80 of the Implementing Regulation). The files are kept in electronic form. The documents are immediately converted into electronic files. Access to the original documents filed by the party to the proceedings, which remain for the time being in the archive, is not granted (cf. paragraph 7.5.8.2 of the Guidelines on the Inspection of Files, OJ 1998, 804). Parties to the proceedings who wish to avoid giving away original documents because the originals are needed for their own purposes or because they contain, in addition to the information required for the purposes of the proceedings before the Office, confidential information on other issues, are reminded that they have the following three options (cf. paragraph 7.4.1.3 of the Guidelines on Inspection of Files). They can either file photocopies only of the relevant pages of the respective original document, or they can file photocopies of the original documents in which certain passages have been blacked out. They may also request that a particular part of the file be excluded from inspection because of a special interest in keeping a part of the file confidential, pursuant to Rule 88 (c) of the Implementing Regulation; in this case, however, the relevant document will be communicated to the other party of an inter partes proceeding (cf. paragraph 7.4.2 of the Guidelines on Inspection of Files).
It is also recalled that it is possible to obtain a certified or uncertified copy of the respective original document, subject to the payment of a fee of 30 Euro (in case of an uncertified copy: 10 Euro) plus 1 Euro for each page exceeding 10 (Article 140 (2) point 11 of the Community Trade Mark Regulation, Rule 89 (4) of the Implementing Regulation, and Article 2 point 28b of the Fees Regulation).
Jean-Claude Combaldieu
President Page 326
A Community trade mark application may claim the priority of a previous Community trade mark application, in accordance with the normal rules and conditions laid down in Article 29 CTMR. This follows from the combined application of Article 29 (1) CTMR which refers to applications for a trade mark in or for any state party to the Paris Convention or to the WTO Agreement, and Article 32 CTMR, which provides that a CTM application which has been accorded a date of filing shall, in the Member States of the Community, be equivalent to a regular national filing.
In order to be the basis of a valid priority claim, the previous Community trade mark application must have fulfilled the conditions for the attribution of a filing date, including the payment of the basic application fee (Article 27 CTMR).
Jean-Claude Combaldieu
President Page 327
Article 41 of the Community Trade Mark Regulation (CTMR) provides that interested persons may present observations after publication of a Community trade mark (CTM) application regarding the registrability of the mark applied for under Articles 5 and 7 CTMR. The Implementation Regulation does not contain any provision on the application of Article 41 CTMR.
While there have been relatively few cases of observations under Article 41 CTMR until now, the procedure applied by the Office in the past has given rise to a number of comments and suggestions from the users of our system. The Office has consulted the interested circles and, as a result, has revised its practice concerning the handling of observations under Article 41 CTMR.
As from 1 March 2000, observations under Article 41 CTMR will be handled in the following manner:
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Once regular observations are received, the Office will issue a receipt to the person making the observations ("observer") which acknowledges the receipt and informs the observer that the observations will be communicated to the applicant. The observer will thereafter not receive any further communication from the Office. Specifically, he will not be informed about the outcome of any re-examination of the application. Observers wishing to be informed of the further fate of the respective CTM application will however be able to access information about the status of an application via the Office's Internet site (oami.eu.int) and its free online access to CTM applications and registrations via CTM- ONLINE.
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The Office will consider in its re-examination of CTM applications that have not been opposed only such observations that are received either within the opposition period (three months from the day of publication) or within one additional month thereafter. The reason for this is that CTM applications will thereafter be processed to registration. However, the Office will communicate any observations received after the expiry of the period mentioned above to the applicant, indicating that they have been received out of time. The observer will be informed accordingly.
As regards observations received concerning CTM applications against which opposition has been brought, the observations will be dealt with as regular if they are received before the termination of the opposition proceedings.
In this context it should be pointed out that arguments relating to absolute registrability of marks made in opposition proceedings are not admitted. Therefore where the opponent wishes to raise grounds relating to the registrability of these trade marks as such, he must do so in a separate submission pursuant to Article 41 CTMR. Page 328
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Since observations always relate to a specific CTM application which is itself subject to language rules, the Office will accept observations if they are submitted in one of the languages of the Office (Spanish, German, English, French and Italian). Observations will also be accepted in a language which is not one of the languages of the Office if they are made in the language of the registration proceedings.
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The Office's Examination Division will deal with observations in such a way that a determination whether the observations raise or do not raise serious doubts about the regis- trability of the mark will be made generally within one month from receipt of the observation. The standard of re-examination - serious doubts - will remain unchanged from what is currently the practice of the Office under the existing Examination Guidelines.
Where serious doubts are raised and the observations were not filed in the language of the registration proceedings, the Office will raise these doubts in accordance with the language rules found in Article 115 (4) CTMR.
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The Office will communicate the observations at the end of the re-examination period to the applicant together with the conclusions that it has drawn.
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Only when the Office raises serious doubts will the applicant be under any "duty" to reply within the time limit set by the Office (or as extended pursuant to a respective request). If no response is received within the time limit, the Office will take a decision on the basis of the information contained in the file.
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When the Office does not raise serious doubts, the applicant is entirely free to submit or not submit any response. If a response is submitted, it will be inserted in the file. However, when no serious doubts are raised, the application will be processed as if no observations had been received. This means, in particular, that when no oppositions have been filed the application will be processed for registration.
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In no event will the observer receive a copy of any responses submitted by the CTM applicant.
Eventually, the new practice will be incorporated in the Examination Guidelines (Part B, par. 10, of the Guidelines concerning proceedings before the Office, OJ OHIM 1996, 1324).
Jean-Claude Combaldieu
President Page 329
Seniority - the 'merger' of Community trade marks (CTM) and identical earlier national registrations of the same mark for the same owner and for the same goods and services - constitutes one of the significant features of the Community trade mark system. In the early years, some 20% of all applications claimed one or more seniorities, while currently this is still the case for some 10%.
The Office was unable to continue examining seniority claims because of the unexpectedly large number of CTM applications filed from the beginning which required the attention of the examining staff to be focused on processing applications from filing to publication. We therefore announced in October 1997 a temporary suspension of examination of seniority claims based on Article 34 CTMR in the application stage, while continuing examination of seniority claims pursuant to Article 35 CTMR after registration.
While it was originally envisaged to resume seniority examination in 1999, this proved impossible because the unexpected increase in CTM applications filed in 1999 (from 31,000 in 1998 to more than 41,000 in 1999).
Having essentially absorbed any "backlog", the Office will now resume examination of seniority claims at the application stage.
What the Office will propose with regard to unexamined seniority claims for CTMs that have been published or registered in the meantime, will be dealt with as a separate issue.
The nature and scope of seniority examination are outlined hereafter.
Pursuant to Rule 1 (1) (h) and Rule 8 (2) IR, a seniority claim must contain the following indications:
- the Member State or Member States where, or with effect for which, the earlier national mark is registered;
- the date from which the registration is effective;
- the number of the registration;
- the list of goods and services for which the earlier mark is registered.
The revised Application Form, published in the Official Journal of the Office (OJ OHIM 2000, 78), provides for these mandatory indications in the following manner:
- Member State(s): check boxes;
- date: fields for all relevant dates (priority if any, filing date, registration date); at least one of the dates must be indicated;
- number(s): application and registration number; at least the registration number must be indicated; Page 330
- goods and services: there are three boxes, one for the case where all the goods or services of the earlier national registration are also found in the CTM application ("total" seniority claim), a second box for the case where senio
Where any of the above mandatory indications are missing or are not completed within the two months following the filing date, the Office will treat the application as being deficient as regards the seniority claim. The applicant will be informed about the deficiency and invited to remedy the deficiency pursuant Rule 9 (3) IR within a period of two months. An extension of the period of two months will not be granted. If the deficiency is not remedied within the time period of two months, the Office will issue a notice of "loss of rights" under Rule 9 (7) IR. This is a notification falling under Rule 54 (1) IR. The applicant may thereafter request, within two months from the notification of loss of rights, a decision of the Office. The Office will either correct its finding of loss of rights and deal with the seniority claim as being in order or issue a decision confirming the loss of rights.
It should be noted in this context that the new receipt that the Office issues since December 1999 contains all the indications that have been entered in the database. Thus, applicants are in a position to control whether all the elements for a complete seniority claim are available.
When the information necessary for a claim is not found in the Application Form itself but rather in the documents admitted in support of the claim, this will be taken as complying with the claim requirement.
While Rule 8 (1) IR provides for a certified copy of a certificate of registration as the required documentation, Rule 8 (4) IR permits derogations from this strict requirement. The President of the Office has exercised his power under this provision and provided that simple photocopies of such documents are similarly admitted, which, when the photocopies are of documents of a particular age, must be accompanied by a statement affirming the accuracy of the information contained therein (Decision No EX-96-3 of 5 March 1996, OJ OHIM 1996, 395; see also Communication No 3/96 of 22 March 1996, OJ OHIM 1996, 594).
The current approach has proved impractical, time-consuming and burdensome for applicants who will have to obtain a certificate from the respective registration authorities. This has delayed examination of seniority claims in the past. Page 331
The Office will now apply a substantially broader approach. The Office will accept as appropriate documents not only certificates (or photocopies thereof) but also copies from official publications of the respective offices concerned (Bulletins, Gazettes, Journals, ...) where the registration was published, provided that publication contains all the required indications. Furthermore, the Office will accept printouts from databases which contain the relevant information and are compiled from data made available by the respective office, regardless of whether the database itself is "official" or a "private" one established for purposes of data collection and dissemination (such as searching, watching, etc.). The source of such printouts must be indicated so that on the one hand any file inspection will enable third parties to assess its reliability and on the other hand to allow the Office to establish a list of accepted database outputs. It should be pointed out that the applicant will assume the responsibility for the accuracy of the data supplied.
The Office will no longer require any affirmation, certification, etc. as to the accuracy of the data contained in the document.
While it is strongly recommended that the documentation - given its easy availability - be included in the application itself, applicants have three months from the filing date (or the later seniority claim date) to provide these documents. When the documents are missing and not provided for in this period, the Office will issue a deficiency notification pursuant to Rule 9 (3) IR and invite the applicant to submit the full documentation within a period of two months. An extension of the period of two months will not be granted. Such extensions, which are discretionary (Rule 71 (1) IR), do not appear justified in view of the broad range of documents that the Office will accept. If the documentation is not submitted within the time period of two months, the Office will treat this deficiency in the same manner as a deficient seniority claim, as described above.
The above rules concerning documentation will only apply to seniority claims under Article 34 or 35 CTMR. They will not apply to priority claims, for which Decision No EX-96-3 of 5 March 1996, OJ OHIM 1996, 395, and Communication No 3/96 of 22 March 1996, OJ OHIM 1996, 594, remain applicable. They will also not apply to opposition or cancellation procedures.
As regards the triple-identity requirements (same owner, same marks, same goods and services), it is for the applicant to make certain that these requirements are met. The Office will examine only the second of these, i.e. whether the marks are the same. The other two - owner, goods and services - will not be examined, except that the Office may refuse a seniority claim where it is obvious that the applicant has made a mistake in his seniority claim. This differentiation is justified because between the time of claiming seniority and not renewing or abandoning the earlier national registration changes may occur both with regard to the CTM registration and the earlier national registration which affect the seniority claim.
As concerns the "same marks" requirement, the Office will apply a "strict" standard, as it did at the time when examination was still carried out. The philosophy behind the "strict" standard is that only when such a standard is consistently applied will it be possible to expect that national authorities called upon to judge whether rights flowing from a no longer registered national mark which provides a basis for a seniority claim may be invoked will feel bound by a decision of the Office. Page 332
The CTM applicant (or the representative) will be notified of a positive (or negative) finding regarding the seniority claim. The applicable Rules and the procedure are the same ones previously mentioned under 1 and 2 above.
The publication of a CTM application under Rule 12 IR will contain, as is currently provided for in the Vademecum, together with the Code "350" an indication of
- the country,
- the registration number,
- the relevant date or dates (priority if any, filing date, registration date).
The Register will contain the indications that have been published under Rule 12 IR.
Where a seniority claim has been published under Rule 12 IR as indicated above, the publication of the registration will not repeat these indications. However, when changes have occurred in the time between publication of the application and publication of the registration, these changes will be indicated.
The certificate of registration will contain, together with the code "350", the same indications as are published under Rule 12 IR.
Post-registration seniority claims presented under Article 35 CTMR and Rule 28 IR will be examined in the same manner as outlined above, i.e. limited to formalities (claim, indications, document) and the requirement of "same marks". Pursuant to Rule 28 (2) IR, any deficiency in the seniority claim will be communicated to the applicant within a time limit fixed by the Register Service. The Register Service will apply more flexibility in granting extensions of time limits than the Examination Division under Rule 9 (3) IR.
The seniority examination in accordance with this Communication will be carried out for all CTM applications filed on or after 1 May 2000.
In due course, the Office will issue a revised decision based on Rule 8 (4) and 28 (4) IR.
Jean-Claude Combaldieu
President Page 333
THE PRESIDENT OF THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS),
Having regard to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark mark (hereinafter referred to as 'the Regulation'), in particular Article 119 (2) (a) thereof,
Having regard to Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (hereinafter referred to as 'the Implementing Regulation'), in particular Rule 84 (4) thereof,
Whereas Rule 84 (4) of the Implementing Regulation empowers the President of the Office to determine that items other than those referred to in paragraphs 2 and 3 of Rule 84 shall be entered in the Register of Community Trade Marks;
Whereas Rule 84 (3) (n) of the Implementing Regulation provides that the date of submission of an application for revocation or declaration of invalidity pursuant to Article 55 of the Regulation or of the filing of a counterclaim pursuant to Article 96 (4) of the Regulation shall be entered in the Register of Community Trade Marks;
Whereas Rule 84 (3) (o) of the Implementing Regulation provides that the date and content of the decision on the application or counterclaim pursuant to Article 56 (6) or the third sentence of Article 96 (6) of the Regulation shall be entered in the Register of Community Trade Marks;
Whereas is is appropriate that all the final decisions on the application for declaration of invalidity or for revocation of the rights of the proprietor of the Community trade mark are entered in the Register of Community Trade Marks, regardless of the result of the decision and not limited to the case where the decision revokes the rights of the proprietor of the Community trade mark or declares it invalid pursuant to Article 56 (6) of the Regulation,
HAS ADOPTED THE FOLLOWING DECISION:
In addition to the elements provided for in Rule 84 (3) (o) of the Implementing Regulation, the date and content of any other final decision by the Cancellation Division on an application for revocation or declaration of invalidity shall be entered in the Register of Community Trade Marks. Page 334
This Decision shall enter into force on the day following its adoption. It shall be published in the Official Journal of the Office.
Done at Alicante, 27 November 2000
Wubbo de Boer
President Page 335
Pursuant to Rules 84 (6) and 89 (5) of the Implementing Regulation, the Office issues certified copies of Community trade mark applications or of documents contained in the files kept by the Office, as well as certified extracts from the Register of Community Trade Marks.
Certain third countries require a legalisation of such documents for the purposes of their recognition before the respective national offices and judicial authorities. This applies, in particular, to certified copies of Community trade mark applications, the so called priority documents, to be used for the purposes of filing later trade mark applications in these countries.
Up to now, the President of the Office has deposited lists with the specimens of signatures of the respective officials of the Office who are entitled to sign such documents, with the embassies in Spain of those countries for which it has been demonstrated that legalisation is required. This procedure has been successful in many, but not all instances, and moreover, does not address the general question as to how documents emanating from the decentralised agencies of the European Union can be authenticated for the purposes of legalisation for the use in third countries.
On 19 September 2000, the European Commission, at the request of the Office, took the decision that the following procedure applies for the authentication of documents issued by the Office. The Permanent Representation of the European Commission in Spain is centrally entrusted with the authentication of documents issued by the Office. Authentication of signature means that the Permanent Representation of the European Commission in Spain will certify the authenticity of the signature appearing on the certified document issued by the Office. The President of the Office has, to this end, deposited a list of specimens of the signatures of the competent officials of the Office at the Permanent Representation of the European Commission in Spain. The party concerned may, after its authentication by the Permanent Representation of the European Commission in Spain, present the document concerned before the competent embassy or consulate in Spain of the respective third country for the purposes of legalisation.
Requests for the authentication of documents issued by the Office should be directed directly to the Permanent Representation of the European Commission in Spain, at the following address:
Comisión Europea
Representación en España Paseo de la Castellana, 46 E - 28046 Madrid
Wubbo de Boer
President Page 336
The issue of whether the activity of retail trading in goods in general or specifically the services rendered in connection with retail selling constitute services for which protection by means of trade mark registration should be granted has long been debated both within and without the European Union. When the Regulation on the Community trade mark1 was adopted on 20 December 1993 the Council and the Commission of the European Communities entered the following statement in the minutes of that meeting:
"The Council and the Commission consider that the activity of retail trading in goods is not as such a service for which a Community trade mark may be registered under this Regulation."2
In keeping with this view the Examination Guidelines adopted in March 19963 made the following provision (4.3(j)):
"The activity of retailing trading is not as such a service."
In accordance with this policy prescription applications for Community trade marks have been refused by examiners to the extent that they have sought registration of retail services whether by use of these plain words or by more complex formulations intended to describe the same idea.
A number of these decisions have been appealed. On 17 December 1999 the Second Board of Appeal of the Office decided4 to set aside the decision of the examiner in the Giacomelli case, considering rather such services to be registrable provided that the field of activity or the specific goods to which the retail services relate are indicated.
The Office does not have the possibility of challenging any particular decision of the Boards of Appeal and is obliged to implement it, as it is doing in the Giacomelli case. However, the decision gave rise to the need to review the policy of the Office in respect of other cases both those already pending before the Examination Division and likely to arise in the future. Page 337
The Office consulted each of the offices of the Member States, including the Benelux Office, in writing and the issue was discussed in depth at Liaison Meetings with these offices on 24 and 25 February 2000 and on 22 and 23 February 2001. These meetings showed that while an increasing number of offices were prepared to give trade mark protection by way of registration to retail services there was by no means a consensus on this approach. Similarly, as regards the details of the approach to the issue by those offices granting registration to retail services varies substantially. At the second meeting in February 2001, the representative of the International Bureau of the World Intellectual Property Organization (WIPO) explained the practice under the Nice Agreement on the International Classification of Goods and Services and the approach of the International Bureau with regard to international registrations under the Madrid Agreement and the Protocol to the Madrid Agreement where registration for retail services was claimed.
Furthermore the Office consulted the international non-governmental organisations which are represented on the OAMI Trade Mark Group. A number of written comments were received, and the issue was discussed at length at the meetings of the Group on 7 July 2000 and 2 February 2001. There was no consensus from this consultation but there was an almost unanimous view that the Office should decide on the issue clearly and quickly.
If a decision is taken in favour of accepting that the activity of retail trading in goods in general and more specifically the services rendered by retail trading enterprises are services for which a Community trade mark may be registered there are two crucial issues to be decided. The first is whether the term "retail services" is in itself sufficient to describe the service. The second is the extent to which such a registration for services would conflict with the registration or use of an identical or similar trade mark for goods and vice versa.
As far as the first issue is concerned, even among those Member States who provide protection through registration for retail services there is no consensus as to how the service should be described. Some accept the plain words "retail services". Others insist that the specification must, in addition, indicate the goods in respect of which the service is carried out. Still others will not accept the plain term but insist on a formulation identical or akin to that contained in the explanatory note to class 35 in the 7th edition of the Nice Classification, namely:
"the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase these goods"
The second issue is particularly difficult to deal with properly in the abstract. It would be possible to avoid addressing the issue by relying on the fact that, in accordance with the case law of the European Court of Justice5, the issue must be appreciated taking all of the factors relevant to the particular case into account. However, this would be disingenuous. The Office itself will have to address the issue in making decisions on oppositions and actions for invalidity. This would arise on foot of actions based on national registrations even if the Office continued to refuse to register retail services. Page 338
In essence the Office is faced with a choice between two options:
- continue to refuse registration of retail services, hoping that one or more of the Boards of Appeal will uphold that position
- accept, in some form or other, registration of retail services.
Other possibilities, such as either amending the Regulation or the Rules to provide a statutory basis to the existing policy or deferring decisions until there is a greater consensus among Member States and interested circles are unrealistic and untenable. The Regulation can be amended only by unanimity and this cannot be expected given the current situation. An amendment of the Rules could not be expected to be effected in any short period of time. Legislating for individual classification issues is not considered to be an appropriate approach anyway. Deferring action is untenable for a body, such as the Office, which has a duty to its clients and the broader public to act in an efficient and expedient fashion.
The Office has decided to accept that the services rendered by retail enterprises are, as such, eligible for registration for Community trade marks. They will be classified in class 35.
In doing so the Office is conscious that this may not accord fully with the expression of the political will of the then Council and Commission in 1993 recorded in the minutes of the Council. However, as pointed out in the Giacomelli case, such statements do not have a legally binding effect. In addition, circumstances have changed since then both in terms of the reality of the market place and the attitude of national offices to the issue in question. Furthermore, recognising that the services rendered in connection with the selling of goods at retail are eligible for registration does not conflict directly with the statement that retailing as such is not a registrable service. Rather, what is accepted for registration is the services rendered in connection with the retailing of goods.
The Office considers that the option of continuing to refuse such applications in the expectation of supporting decisions from one or more Boards of Appeal offers at best a deferral of the decision now being taken and at worst the uncertainty that might arise from conflicting decisions.
The Office does not favour the formulation given by the 7th Edition of the Nice Classification to describe retail services. The meaning of the term "retail services" is clear and for the purposes of classification in accordance with Article 28 CTMR and Rule 2 nothing more is necessary. The Office will of course also accept the wording given by the 7th Edition of the Nice Classification or any other similar wording. The International Bureau of WIPO similarly accepts the term "retail services" in international registrations, on the premise that it will be understood to have the meaning given in the formulation found in the 7th Edition of the Nice Classification. Page 339
The Office does not accept the view expressed in the Giacomelli case that a reference to the field of activity is a legal necessity. This view conflicts with principles of classification consistently applied by the Office as well as many national offices and also by the International Bureau of WIPO with regard to other services such as "repair" or "maintenance", or "transportation", where an indication of the filed of activity is not required.
However, the Office does consider that a limitation to the field of activity or more specific nature of the retail service is desirable. Limitation of the specification will lessen the chance of irrelevant and unnecessary oppositions.
The Office suggests that limitations be expressed in one of the following ways:
- in relation to the field of activity, by for example using phrases such as "retail services in respect of food and beverages"
- in relation to the specific nature of the service, by for example using phrases such as "retail services of a department store", "retail services of a supermarket" etc.
The Office will apply the same principles to similar services rendered in connection with other forms of sales activities relating to goods, such as mail order, internet shopping and wholesale.
On the other hand, terms which are not clearly limited to such services in respect of the marketing of goods, but would appear to include the marketing of services as well, are not acceptable (such as "e-commerce" etc.).
The Examination Guidelines will be amended accordingly in due course.
The limitation of applications and registrations for such services by indicating the field of activity of retail or other selling services will reduce the likelihood of conflicts because the risk of confusion between, for example, retail sales of meat on the one hand and of electrical goods on the other is non-existent.
As regards conflicts between services and goods, the Office takes the view that, while a "similarity" between goods sold at retail and retail services cannot be denied in the abstract, the risk of confusion is unlikely between retail services on the one hand and particular goods on the other except in very particular circumstances, such as when the respective trade marks are identical or almost so and well-established in the market. Each case that arises will of course be dealt with on its own merits.
Given that situation those requesting registration of marks for retail (or similar) services should not expect that they thereby obtain protection against the use or registration of marks for goods. If such protection is required as well, it is clear that registration for goods must be requested as well.
A substantial number of applications for Community trade marks in respect of retail services are pending before examiners. These will now be accepted, for the purposes of classification, even if a notification of provisional refusal has already been issued. Where a decision has been taken and the appeal period has not expired the applicant should file an appeal. Interlocutory revision will be granted. Where a decision has been taken and no appeal has been filed within the prescribed period the decision has become final and cannot be reversed. Page 340
Although the Office is recommending a limitation of specifications this will not be done in respect of each application. It is open to applicants, in accordance with Article 44 CTMR to restrict their applications at any time.
As regards searches carried out by the Office under Article 39 CTMR there will be no change in Office practice. In other words, there will be no cross search between class 35 and other classes.
Wubbo de Boer
President Page 341
On 1 January 2002, the 8th edition of the Nice Classification entered into force. The main features of the changes introduced are:
- changing the class heading of Class 42 to: "Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.&a
- creating new Class 43 for "services providing food and drink; temporary accommodation";
- creating new Class 44 for "medical services, veterinary services, hygienic and beauty care for human beings or animals, agriculture, horticulture and forestry services";
- creating new Class 45 for "personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals".
All services contained in Classes 43 to 45 were formerly contained in Class 42.
The Office applies the 8th edition of the Nice Classification as from 1 January 2002. It does so for all Community trade mark (CTM) applications filed on or after 1 January 2002.
This means that pending CTM applications or already registered CTMs having a filing date prior to 1 January 2002 will not be reclassified. A reclassification of pending applications or registered marks will not even be allowed as an option to the CTM applicant or proprietor.
No decision has been taken yet whether reclassification will be made or allowed at the point in time of renewal of the CTM registration. The reason is that this matter is not urgent for the Office since the first renewals will become due in 2006.
Pursuant to Article 39 CTMR, searches are performed by the Office (Community search report) and by the national offices of the Member States who have declared that they would do so (national search reports).
As concerns the Community search reports, the changes in the classification will be reflected by the way in which the search is effected not only in the class actually claimed, but also in neighbouring classes (cross-searching).
Since a CTM application filed after 1 January 2002 which claims services in Class 43, 44 or 45 can be in conflict with a CTM application filed before 1 January 2002 which claims identical services hitherto contained in Class 42, all CTM applications claiming Classes 43, 44 or 45 will be cross-searched against Class 42.
The Office will not cross-search Classes 43, 44 and 45 against each other. Page 342
The 8th edition of the Nice Classification will be reflected in the Office's databases and publications as from 1 January 2002. As old applications or registrations will not be reclassified (even not on an optional basis), a mention of the applicable edition of the Classification in the publication in the CTM Bulletin is not necessary since it can be derived from the filing date.
As from 1 January 2002, the class heading of Class 42 no longer contains the indication "Services that cannot be classified in other classes", and as none of the new classes contains a similar indication, the Office now accepts all class headings.
An Extraordinary Meeting was held with the national offices on 20 November 2001, dedicated exclusively to the practical questions arising from the entry into force of the 8th edition of the Nice Classification. At that meeting and subsequently, the national offices informed the Office about the way in which they will implement the 8th edition in respect of pending applications or registrations, i.e. about their approach towards reclassification. This information is summarized in the Annex to this Communication.
Wubbo de Boer
President Page 343
THE PRESIDENT OF THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS),
Having regard to Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council regulation (EC) No 40/94 on the Community trade mark (hereinafter referred to as 'the Implementing Regulation'), in particular Rule 82 (4) and Rule 91 (2) thereof,
Whereas the Office will make available the electronic filing of Community trade mark applications through the Internet;
Whereas the technical details of this electronic filing system should be determined;
Whereas the electronic application will consist of an electronic file prepared by the applicant and sent to the Office through the Internet;
Whereas the representation of the trade mark and other documents like seniority or priority documents may be filed as an attachment to that electronic communication;
Whereas the admissible data formats for such attachments must be determined,
HAS ADOPTED THE FOLLOWING DECISION:
(1)As from 12 November 2002, Community trade mark applications may be filed electronically through the Internet.
(2)The filing through the Internet shall consist of sending through the Internet the completed CTM application form made available on the Office's website under the following address: http://service.oami.eu.int/forms/ctmapplication.
(3)The filing may contain attachments in accordance with Article 4.
The Office may allow the filing of Community trade mark applications through the Internet through the communication of data in another form than by transmission of an electronic application form as provided for in Article 1, and to another address than the address referred to in Article 1 (2), under technical conditions to be agreed on with each applicant concerned, to the extent that this is appropriate so as to render the filing of large quantities of applications more efficient. Page 344
A Community trade mark application filed electronically through the Internet shall be deemed to have been received by the Office on the day on which the data are received by the electronic data processing system of the Office, provided that they can be processed by the Office.
(1)Where the applicant does not wish to claim any special graphic feature or colour (Rule 3
(1) of the Implementing Regulation), the trade mark shall be indicated as a "word mark", and the respective field in the electronic application form shall be filled in. In all other cases, the graphic representation shall be filed as an attachment to the electronic application form. The graphic representation shall be in the .jpeg data format.
(2)Where registration of a sound mark is applied for, one sound file containing the sound may be filed as an attachment to the electronic application form. The sound file shall be in the .mp3 format. Its size shall not exceed one Megabyte. It shall not allow loops or streaming.
(3)Documents in support of a priority claim or a seniority claim in accordance with Rule 6
(1) or Rule 8 (1) of the Implementing Regulation, also in conjunction with Decision No EX-03-5 of the President of the Office of 20.1.2003, regulations governing the use of a collective mark in accordance with Article 65 of the Community Trade Mark Regulation, and the indications referred to in Rule 124 of the Implementing Regulation, may be sent as attachments to the electronic application form. Such attachments shall be in the .pdf or.jpeg data format.
(4)Any other attachments, or any attachments that do not comply with paragraphs 1, 2 or 3, shall be deemed not to have been filed.
(1)Immediately upon receipt by the Office, an electronic receipt shall be issued to the sender, indicating the date and hour of the receipt of the application and accompanied by an electronic copy of the application as filed.
(2)The Office shall send an electronic communication containing the file number of the application and a statement that the date of receipt will also be the filing date provided that the basic application fee is paid in time. This communication shall either be contained in the electronic receipt pursuant to paragraph 1 or shall be sent as a separate electronic communication.
(3)In addition, a receipt shall be issued on paper in accordance with Rule 5 (1) of the Implementing Regulation. Page 345
On receipt of the electronic application, its content shall be imported into the database of the Office and shall be converted into a graphic file which represents the appearance of the electronic application form on the screen of the computer of the applicant. This graphic file shall constitute the Community trade mark application as a part of the files relating to the Community trade mark application and as the subject of inspection of files (Rule 89 (1), (4), (5) of the Implementing Regulation).
This decision shall enter into force 12 November 2002. It shall be published in the Official Journal of the Office.
Done at Alicante, 7 November 2002
Wubbo de Boer
President Page 346
THE PRESIDENT OF THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS),
Having regard to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, in particular Article 119 (2) (a) thereof, hereinafter referred to as "Council Regulation No 40/94",
Having regard to Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark, hereinafter referred to as "Commission Regulation No 2868/95", in particular Rules 6 (4), 8 (4) and 28 (4) thereof,
Having regard to Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs, hereinafter referred to as "Commission Regulation No 2245/2002", in particular Article 8 (1), second sentence, thereof,
Whereas Rules 6 (4), 8 (4) and 28 (4) of Commission Regulation No 2868/95 provide that the evidence to be furnished by the applicant on claiming priority or seniority may consist of less than is required in the other relevant provisions of the Implementing Regulation, provided that the information required is available to the Office from other sources;
Whereas Article 8 (1) of Commission Regulation No 2245/2002 provides that the President of the Office shall determine what evidence the applicant must provide when claiming priority;
Whereas an accurate photocopy of a document required as evidence in support of a priority claim or seniority claim contains the same information as the original of that document;
Whereas the evidence to be provided when claiming seniority is also available to the Office from a document other than the original or a photocopy of the certified copy of the earlier registration to which Rule 8 (1) and Rule 28 (1) of Commission Regulation No 2868/95 refer, if the document constitutes an extract or printout of an official publication or database published by the office which registered the earlier national mark, or of a database or data carrier which is based on data supplied by that office, provided that the document contains the required indications;
Whereas it is in the responsibility of the applicant or proprietor of the Community trade mark to ensure that no intervening changes have occurred that would affect the identity of the proprietor of, and of the goods and services contained in, the earlier registration, and whereas the scope of the examination of seniority claims carried out by the Office is limited, so that it is not necessary to make provisions concerning the date on which the document was issued,
HAS ADOPTED THE FOLLOWING DECISION: Page 347
The applicant for a Community trade mark may file the documents in support of a priority claim issued by the authority which received the previous application as provided for in Rule 6 (1) of Commission Regulation No 2868/95 ("priority document") in the original or in the form of an accurate photocopy. To the extent that the original of the priority document contains a representation of the mark in colour, the photocopy shall also be in colour.
(1) The evidence to be provided by the applicant for a Community design pursuant to Article 8 (1) of Commission Regulation No 2245/2002 shall consist of a certified copy of the previous application or registration, issued by the authority which received the previous application and accompanied by a certificate stating the filing date of the previous application. That document may be filed in the original or in the form of an accurate photocopy. To the extent that the original document contains a representation of the design in colour, the photocopy shall also be in colour.
(2) Where the priority of a previous application for a Community design is claimed, the applicant shall indicate the application number of the previous application for a Community design and its date of filing. The Office shall ex officio include a copy of the previous application in the file of the Community design application. Paragraph 1 shall not apply.
(1) The evidence to be provided by the applicant for or proprietor of a Community trade mark pursuant to Rule 8 (1) or Rule 28 (1) (f) of Commission Regulation No 2868/95 shall consist of either of the following:
(a) a registration certificate, renewal certificate or extract from the register, issued by the competent authority which registered the earlier registration;
(b) an extract of the issue of the official bulletin or gazette issued by the competent national office, where the registration of the earlier national mark was published;
(c) an extract of the issue of the gazette "Les Marques Internationales" issued by the International Bureau, where the earlier international registration having effect in a Member State was published;
(d) an extract or printout of a database or data carrier such as CD-ROM, which evidences the existence of the earlier registration, provided that the database or data carrier was issued by or on behalf of, or is based on the data furnished by, the competent national office or the International Bureau;
(e) an accurate photocopy of a document referred to in subparagraphs (a) to (d).
(2) The document submitted in accordance with paragraph (1) must contain at least the following indications and elements:
(a) the Member State or Member States in or for which the earlier mark is registered; Page 348
(b) the priority date, application date or registration date of the earlier mark; at least one of these dates must be indicated;
(c) the number of the earlier registration;
(d) the name of the proprietor of the earlier registration;
(e) the representation of the trade mark; and
(e) the indication of the goods and services for which the earlier mark is registered.
(3) In the case of paragraph 1 (d) or (e), the extract or printout or photocopy must be in colour if the earlier mark was published in colour.
Decision No EX-96-3 of the President of the Office of 22 March 1996 on the evidence to be provided when claiming priority or seniority (OJ OHIM 1996, 594) is repealed.
This Decision shall enter into force on the date following its adoption. It shall be applicable as of 1 January 2003. It shall be published in the Official Journal of the Office.
Done at Alicante, 20 January 2003
Wubbo de Boer
President Page 349
Organizations representing Community trade mark applicants and proprietors and representatives have requested a clarification of the practice of the Office regarding the use of class headings and the consequences of such use when Community trade mark applications or registrations are restricted or partially surrendered or are involved in opposition or cancellation proceedings. This communication is intended to explain and clarify the practice of the Office.
A Community trade mark application must contain a list of goods and services in respect of which registration is requested. This is a filing date requirement pursuant to Articles 27 and 26 (1) (d) of the Community Trade Mark Regulation (CTMR). Pursuant to Article 28 CTMR and Rule 2 of the Implementing Regulation (IR), goods and services in respect of which Community trade marks are applied for shall be classified in conformity with the common classification referred to in Article 1 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
The common classification, administered by the International Bureau of the World Intellectual Property Organization, consists of a list of classes, together with, as the case may be, explanatory notes, currently - since 1 January 2002 - comprising 34 classes for goods and 11 classes for services, each class composed of one or several general indications, commonly referred to as the "class heading" of a certain class, and of the alphabetical list of goods and services that currently contains some 12,000 entries together with the proper classification.
Pursuant to Rule 2 (2) IR, the list of goods and services must be worded in such a way as to indicate clearly the nature of the goods and services and to allow each item to be classified preferably in only one class of the Nice Classification.
The Office strongly recommends that applicants properly classify their list of goods and services in the application and group them in the order of the Nice Classification. If this is not done, the Office will invite the applicant to remedy that deficiency pursuant to Rule 9 (3) (a) IR. This will necessarily lead to a delay in the treatment of the application. Page 350
It constitutes a proper specification of goods and services in a CTM application if the general indications or the whole class headings provided for in the Nice Classification are used. The use of these indications allows a proper classification and grouping. The Office does not object to the use of any of the general indications and class headings as being too vague or indefinite, contrary to the practice which is applied by some national offices in the European Union and in third countries in respect of some of the class headings and general indications.
It is further permitted to use a general indication mentioned in a class heading of a certain class and in addition more specific goods or services covered by the same general indication falling within the same class. For example, it is possible to indicate in class 16 "printed matter" and also "books, newspapers, magazines".
The 34 classes for goods and the 11 classes for services comprise the totality of all goods and services. As a consequence of this the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within this particular class.
Similarly, the use of a particular general indication found in the class heading will embrace all of the individual goods or services falling under that general indication and properly classified in the same class. For example, the use of the general indication "Pharmaceutical and veterinary preparations" in class 5 will embrace all pharmaceutical preparations regardless of their composition or indication.
Furthermore, where it may not be obvious under which of several general indications particular goods or services fall, there is nevertheless a classification-based reasoning for the proper classification. For example, "computer software" is classified in cl. 9 because of the presence of the general indication "data processing equipment and computers" in that class, because computer software is seen as directly related to the corresponding apparatus or equipment. Therefore, when a specification contains "data processing equipment and computers" as a general indication, this will be considered as embracing also computer software. On the other hand, where a specification lists general indications in class 9 but not "data processing equipment and computers", computer software will not be considered as falling within the specification.
The effects of the rule that the use of the class headings constitutes a claim to all the goods or services falling within the relevant class, and that the use of a general indication constitutes a claim to all the particular goods or services falling under the general indication, become apparent when the Office has to deal with a request to restrict the list of goods and services pursuant to Article 44 (1) CTMR or with a partial surrender pursuant to Article 49
(1) CTMR. They become further apparent when the identity or similarity of goods or services is to be judged pursuant to Article 8 (1) CTMR in an opposition or cancellation proceedings. Page 351
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As regards restrictions and partial surrenders, it constitutes a proper restriction (and not an inadmissible extension of the list of goods and services) when the list of goods and services of a Community trade mark application or registration that originally contained the complete class heading of a particular class is composed of one or more specific goods or services properly classified in the same class and the class headings.
Similarly, it constitutes a proper restriction (and not an inadmissible extension of the list of goods and services) if a specification is limited by deleting a general indication and instead selecting one or more specific items falling under the general indication. In the example cited above, it is proper to limit a specification to "computer software" when the original specification contained "data processing equipment and computers", but it would not be proper to do so when this general indication was not found in the original specification.
It remains of course also possible to declare a restriction or partial surrender by adding a limitation to a general indication (e.g., alcoholic beverages, namely gin, whisky, vodka; or alcoholic beverages with the exception of gin, whisky, vodka).
Once a restriction has been declared it is thereafter no longer possible to return to a broader specification. For example, where the original specification contained "data processing equipment and computers" and was thereafter limited to "computer software", it is then no longer possible to return to a broader indication, such as "computer hardware".
This rule is applied in the various proceedings in the Office when restriction or partial surrender may become relevant, i.e. at the ex-parte stage when classification or the examination of absolute grounds of refusal is at issue or in inter-partes proceedings when such a restriction or partial surrender may be declared by the proprietor of a Community trade mark application or registration in order to avoid an opposition or application for invalidation.
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As regards opposition and cancellation proceedings, the rule that the use of the whole class heading of a particular class means that all the goods within that class are included has the consequence that when the later application or registration contains goods or services properly classified in that same class, the goods or services are identical with the goods or services in the earlier mark. When the specification does not include all of the general indications of a particular class heading, but only one or some of them, identity will be found only when the particular item falls under the general indication. For example, when the later mark is for "computer software", and the earlier mark is protected for "data processing equipment and computers", or when the earlier mark is protected for "pharmaceutical preparations" and the later mark is for a specific medicine, the goods will be identical.
As regards the requirement of use, a mark will be considered used for goods for which it is registered if the registration covers all of the general indications in a class heading and the goods for which the mark used are properly classified in the same class. Where the mark was registered only for some of the general indications in the class heading, use of the mark for registered goods will be found when the goods properly fall under the respective general indication found in the specification. This is without prejudice to the scope of protection of the mark for which use has been demonstrated, which is generally based on the goods for which the mark has been used rather than on the goods for which it is registered. Page 352
These rules will continue to be applied in the various proceedings referred to, and to the extent that exceptions from these rules have occurred, this will no longer be the case. There are no decisions of the Boards of Appeal which would be at variance with the rules explained.
Wubbo de Boer
President Page 353
On 1st May 2004, the European Union will be enlarged for the fifth time since the establishment of the European Community in 1957. The Treaty of Accession was signed with 10 candidate countries (Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovenia and Slovakia) on 16 April 2003. The Accession Treaty will have to be ratified both by the candidate countries and by all of the current Member States.
This historical event represents an important change for the Community trade mark (CTM) and the Community (CD) design systems, with many implications for the holders of rights, their representatives, third parties, the national offices and the OHIM. For the first time an enlargement will take place when Community trade marks and designs are in existence. Furthermore, the Office will face an enlargement process that, due to the number of new Member States and new official languages of the European Community (Czech, Estonian, Latvian, Lithuanian, Hungarian, Maltese, Polish, Slovenian and Slovak) represents a considerable challenge.
Since November 1998, the Office has followed the enlargement negotiations and, in particular, the aspects related to the Community trade mark and later the Community design. The aim was to give input to the Commission on technical matters when required, make the necessary internal preparations but also to ensure that interested circles and the offices of the candidate countries be informed to prepare for the changes to come.
The present communication is designed to explain the main consequences of enlargement on both the CTM and CD systems as well as the preparations made by the Office to cope with the changes it will generate.
As a result of the negotiations, both the Community Trade Mark Regulation (CTMR) and the Community Designs Regulation (CDR) have been amended. Two new provisions governing the legal implications of enlargement for Community trade marks (CTMs) and Community designs (CDs), Articles 142a CTMR and 110a CDR, applicable as from the date of accession, were agreed. The text of these provisions and explanatory elements can be found at the Office's website, in its enlargement section (http://oami.eu.int/en/enlargement/default.htm). Page 354
The solution arrived at by negotiators had to satisfy several important requirements. It had to ensure that the unitary character of the Community trade mark and design be maintained and, at the same time, that the pre-existing rights in the new Member States be fully respected. Also the solution had to respect the laws of the new Member States. This was achieved by the automatic extension of earlier Community rights and the possibility for holders of earlier national rights in the new Member States to prohibit the use of such extended Community rights in case of conflict. It is also foreseen that the law applicable in the new Member States will remain applicable to extended CTMs by allowing to prohibit the use of such trade marks if they are contrary to the laws of the new Member States (Article 106(2) CTMR)
The main legal consequence for holders of CTMs filed before the date of accession (irrespective of whether they have also already been registered or not) is that their protection will be automatically extended to the territories of the new Member States. This extension will happen at 0.00 hours on 1st May 2004 without any administrative or other intervention from either the OHIM or any other body. Neither is the holder required to act in any way. No fees will have to be paid. The extension will happen by the operation of the law directly applicable under the new Article 142a CTMR. More than 300.000 CTMs will be extended and enforceable before Community trade marks courts in the new Member States as from the date of accession.
Holders of registered and unregistered Community designs will equally benefit from the automatic extension of their rights in the new Member States and they will be able to enforce their rights before the Community designs courts to be established in those countries.
A CTM registered or applied for before the date of accession of the new Member States becomes an extended CTM. Thus, an extended CTM is a CTM which has a filing date prior to the date of accession, irrespective of whether priority was claimed. It was not only necessary to decide whether such CTMs should be extended or not, but a solution had to be found as to how such applications should be examined by the OHIM (in case that had not yet happened before accession) and on what basis they could eventually be cancelled or not. Page 355
The rule is that for examination on absolute grounds and cancellation actions on such grounds, only the situation existing prior to enlargement will be taken into account (meaning that absolute grounds for refusal/invalidity which become applicable merely because of accession will not be taken into account.). This is so irrespective of when the examination or the cancellation action actually takes place. Therefore, CTMs filed before enlargement will only be examined for absolute grounds on the basis of the current situation, for example as regards their meaning by taking into account the current 11 official languages of the European Community. Grounds for refusal which become applicable solely as a result of the enlargement, such as the descriptive meaning of a word in a language of one of the new Member States, will not be applied in relation to extended CTMs. The "grandfathering" applies not only at the stage of examination, but also at the stage after registration: Extended CTMs can only be cancelled on the basis of a ground that was valid at the time before enlargement (meaning that they cannot be cancelled on the basis of grounds that become applicable merely because of accession.) Therefore, a word that is descriptive, non distinctive, generic, deceptive or contrary to public policy and morality in a new Member State will not be refused by the examiner or be subject to cancellation after registration if it was filed before accession of that Member State.
Equally, a CTM filed before enlargement will not be subject to an opposition proceeding (except as explained hereafter) or subject to an invalidity proceeding if it is in conflict with an earlier national right registered, applied for or acquired in a new Member State prior to the date of accession.
The consequence of the automatic extension and the "grandfathering" of CTMs registered or applied for before the date of accession is that from that date - 1st May 2004 -, extended CTMs will be enforceable in the new Member States. Problems of conflicts with national rights acquired in the new Member States prior to their accession may arise. These national rights comprise all the rights listed as possible rights upon which an opposition - Article 8 CTMR - or an application for declaration of invalidity - Article 52 CTMR - may be based.
To safeguard the rights of owners of national rights in the new Member States, it was decided that they can prohibit the use of the extended CTMs in the territory covered by the right. The extended CTM would be valid and enforceable in the entire EU, including the new Member State, but not against an earlier conflicting national right. The extended CTM would thus not only not be enforceable against an earlier national right, but the holder of such a right can prohibit the use of the extended CTM in his territory. The right to prohibit the use of a CTM that is in conflict with an earlier national right is provided for in Articles 106 and 107 CTMR, and that provision is now expressly extended to the holders of rights acquired in the new Member States prior to their date of accession. This exception is limited only to the territory where that national right is valid. The proprietor of such an earlier right in a new Member State would not be entitled to enforce his rights against the use of an extended CTM if the earlier right was acquired in bad faith.
The holder of the earlier national right will thus have the possibility to sue the user of the extended CTM before national courts. The determination of the competent court, the procedural rules as well as the substantive provisions applicable are all determined by national law. Page 356
An extended CTM can be descriptive, non-distinctive or generic in the language of a new Member State. The "grandfathering" of extended CTMs in these situations is not meant to confer on their proprietors any additional rights in the new Member States vis-à-vis such descriptive or non-distinctive indications. Rather those using such indications in the new Members States potentially to be accused of infringement will be able to rely on Article 12 CTMR to defeat such an infringement action.
An extended CTM can also be deceptive or contrary to public policy or morality in a new Member State. Such a situation is addressed in Article 106 (2) CTMR. Consequently, the use of such trade marks in the respective new Member State may be prohibited in accordance with the law of that state.
The rule according to which extended CTMs are "grandfathered" vis-à-vis new absolute and relative grounds is subject to one exception: CTM applications filed between 1 November 2003 and 30 April 2004 can be subject to oppositions based on earlier rights in the new Member States, pursuant to Article 142a(3) CTMR. The earlier right in the new Member State must be earlier in absolute terms than the opposed CTM (meaning that the national trade mark or right must have an earlier filing date or priority date (or earlier date of acquisition) than the opposed CTM application) and must have been acquired in good faith. The opposition may be filed within the period of three months following publication, provided for by Article 42 CTMR. This exception is applicable irrespective of the point in time on which such CTM applications are published. Given the present speed of examination of CTM applications, such publication should happen after enlargement.
As mentioned above, earlier Community designs (i.e. those filed before enlargement or in the case of unregistered designs those made available to the public within the Community according to Article 11 CDR before enlargement) will equally be automatically extended to the territory of the new Member States.
Accession does not change the situation as regards grounds for non-registrability of designs: The limited "substantive examination" of design applications will be virtually unaffected (the definition of a design does not change with the arrival of new Member States, nor does the assessment in general of whether a design is or not contrary to public policy/morality).
As regards grounds for invalidity, accession only affects the validity of registered designs in a limited number of situations (e.g. a prior design protected in a new Member State before accession was disclosed after the filing of a registered Community designs (RCD); conflict with an earlier trade mark protected in a new Member State, etc.). In these limited situations where the ground for invalidity becomes merely applicable because of accession, Article 110a (3) CDR will grandfather the extended Community design.
The accession treaty establishes a right to prohibit the use of an extended CD in case of conflict with an earlier right (trade mark, copyright) or in case of a prior design disclosed after the filing of a CD. Page 357
Finally, Article 11 CDR is qualified by the new Article 110a (5) CDR which provides that, pursuant to Article 11, a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community design.
The Office has prepared amended guidelines on examination and on opposition that will be submitted to the Administrative Board as soon as possible. The drafts are available for consultation at http://oami.eu.int/en/mark/marque/direc.htm .
Extended CTMs and CDs will be neither translated nor published in the nine new official languages of the European Community. A CTM or a CD filed before the date of accession will be published in the current 11 official languages of the European Community.
As regards searches, the Council is currently presented with a proposal from the Commission to amend the CTMR which includes a proposal for the abolishment of searches. If that proposal should not be adopted, the Office would in any event not transmit copies of CTM applications filed before the date of accession to the national offices of the new Member States which would operate searches pursuant to Article 39 CTMR.
In 2001, the Office made an internal assessment of the financial and practical consequences of the enlargement process for the CTM and CD systems and for the Office. While the volume of applications filed by applicants from the new Member States has been low (until end August 2003, only 679 CTM applications and 18 Community designs were received from the 10 acceding countries), the situation is likely to change as filing will become more accessible for those applicants (e.g. convenience of using their own language, filing via their national office, designating their national representatives, etc.) and awareness of the benefits of the CTM and CD systems will increase among users.
The Office is committed to ensuring that enlargement does not represent a factor that slows down trade mark and design procedures. The necessary preparatory measures have been taken to allow this goal to be achieved. An action plan to implement a number of internal preparatory measures, in all the operational and administrative areas of the Office, was established with that objective. Operational costs for the Office will increase due to enlargement (e.g. translation of lists of goods and services in the official languages, more national search reports to be paid for). The real financial impact of enlargement will depend on decisions taken in the Council on the reform of the CTM system and in the governing bodies of the Office.
The main preparations of the Office include the translation of Office documents (forms, brochures, Euronice, Eurolocarno) into the new official languages and the recruitment of staff from new Member States as from July 2003. Of course the changes require also other measures such as training of Office staff on enlargement, profiles of new Member States, consequences for the Office and the CTM and CD systems, etc. This is coupled with the establishment of new guidelines for examination and opposition procedures. Among the more technical preparations, the development of the IT systems (Euromarc, Euronice) notably to reflect the new language requirements was paramount. Page 358
The Office has not only looked into its internal functioning. The enlargement entails important changes also for the interested circles and the offices of the new Member States. To allow for an optimal preparation on their side, the OHIM has taken a number of measures. To inform the interested circles on enlargement implications of the CTM and CD systems the Office has organised an exchange of views in the framework of the OAMI User Group. A specialised sub group, the "OAMI enlargement working group" was created. It met three times and followed closely issues like the legal solution given by the negotiations, the problem of possible bad faith applications and the measures to be taken to avoid them. All the information treated by the group was made available free on the website of the Office to allow maximum dissemination. The preparations also include an on-line consultation mechanism of trade marks filed in the new Member States.
The offices of the candidate countries also showed a vested interest in the preparation of accession. A multi-annual co-operation programme was put in place. Presentations on the CTM and the consequences of enlargement were made in all candidate countries. Participants in such meetings and conferences included representatives of national offices and other officials like judges, professional representatives, lawyers and other legal advisers and business circles.
The participation of candidate countries in the work of the Office was assured via regular meetings at head of office or expert level. They were invited to participate in liaison meetings and a specialised preparatory working group was created. The heads of offices met three times with the OHIM President and Vice-Presidents. This allowed for a smooth transition to the participation of the heads of offices of the ten acceding countries as observers in the Administrative Board and Budget Committee of the OHIM as from November 2003.
Wubbo de Boer
President Page 359
In its judgment of 6 May 2003 in Case C-104/01, the European Court of Justice had to rule on issues related to the registrability of colour marks. This ruling was a result of a reference to the Court under Article 234 EC by the Hoge Raad der Nederlanden for a preliminary ruling in the proceedings pending before that court between Libertel Groep BV and the Benelux-Merkenbureau, on the interpretation of Article 3 of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.
Two significant issues for the Office and users of the CTM system arise from the ruling. Firstly, the Court has confirmed the approach that the Office has taken to distinctiveness of colour marks per se. Secondly, the Court also dealt with the question of graphic representation of colour marks.
This latter aspect has given rise to concerns on the part of some of the applicants and their representatives and this Communication is intended to address those concerns. Other issues are not dealt with in this Communication, and this Communication also does not deal with questions relating to marks which are not colour marks per se, but marks - word marks, figurative marks, three-dimensional marks - containing colour.
The concerns arise, principally, from certain Court's statements according to which "a mere sample of a colour does not satisfy the requirements" of graphic representation (par. 31 of the judgment) which "must be clear, precise, self-contained, easily accessible, intelligible, durable and objective" (par. 29 of the judgment). The Court went on to suggest that this problem might be addressed by for example "a verbal description of a colour" or "by adding a colour designation from an internationally recognised identification code" (par. 37 of the judgment).
The Office notes that the Court, in addressing this point, referred to the problem of the deterioration of a colour over time, in particular by reference colour reproduced on paper. The Court acknowledged that on certain media it is possible to reproduce a colour in permanent form (par. 32 of the judgment).
In accordance with Rule 84 (1) of the Implementing Regulation (CTMIR) the Register of Community Trade Marks is, in practice, kept in electronic form. The representations of all trade marks, except word marks, are scanned and stored electronically. The question of durability addressed by the Court does not, therefore, arise in respect of Community trade marks.
Nevertheless, the Office would recommend that where registration for a colour mark per se is applied for the indication of the colour required under Rule 3 (5) CTMIR should where possible include a designation from an internationally recognised identification code. Where such an indication is not possible, for example because the colour or shade of colour does not exist in the coding system, appropriate indications to this effect may be made under the aspect of "indication" pursuant to Rule 3 (5) CTMIR. Page 360
The Office is of the view that the indication of the colour code as well as any description are formalities which should not be confused with the examination for distinctiveness, which will be based on the colour mark as represented in the database of the Office and the goods and services for which registration is claimed.
As regards colour marks per se filed before the date of this communication or already registered, the Office will accept clarifications as to the indication seeking to add a colour code indication or an explanation for the absence of such colour code indication.
Wubbo de Boer
President Page 361
In its ruling in Case C-361/02 P of 9 September 2003, the Court of Justice has dismissed a further appeal lodged by the heirs of the late Mrs. Kik. She had filed a Community trade mark application and had failed to indicate a second language from among the languages of the OHIM. The Court of Justice, in dismissing the appeal of Mrs. Kik's heirs, confirmed the legality of the language regime of the Office and stated that it is not in conflict with the EC Treaty or principles of Community law.
This includes Article 115 (4) CTMR, which confers an option to the Office to address written communications to the applicant in the second language, if the first language is not one of the five languages of the Office.
Nevertheless, the Court of Justice ruled that the term "written communications" is to be interpreted narrowly and does not comprise procedural documents required or prescribed for the processing of CTM applications.
Following consultation of the Legal Service of the Commission and after having informed the Administrative Board of the Office, the Office decided to implement this ruling in the interest of those who use a language for filing which is not one of the Office's languages: In those cases, the first language will be used for all the correspondence related to the application unless the applicant expressly indicates that he wishes that the Office uses the second language. The Office will apply this new practice both for Community trade mark as well as for Community design applications.
The receipts issued for Community trade mark applications and Community designs received from 1 May 2004 filed in one of the 15 official languages of the European Community which are not languages of the Office will contain the following paragraph:
"If you wish to receive subsequent correspondence from the Office in respect of this application in the second language you should notify the Office in writing, quoting the number above" (i.e., the application number).
Only those Community trade mark applications and Community design applications which are filed on or after 1 May 2004 can be filed in, and will be translated into, the nine new official languages of the European Community, namely Czech, Estonian, Hungarian, Latvian, Lithuanian, Maltese, Polish, Slovak and Slovenian (cf. Communication No 05/03 of the President of the Office of 16 October 2003, point 7, OJ OHIM 2004, 68). Communications No 5/97 of 26 September 1997 (OJ OHIM 1997, 1378) and No 3/98 of 20 April 1998 (OJ OHIM 1998, 698) remain applicable as concerns the manner in which translations of lists of goods and services or amendments thereto into the second language or the other languages will be handled.
Wubbo de Boer
President Page 362
On the 1st of October 2004, the Madrid Protocol will enter into force for the European Community (see Madrid (Marks) Notification No 160 of the Director General of WIPO, available under http://www.wipo.int/edocs/notdocs/en/madridgp/treaty_madrid_gp_160.html).
On the same date, the Regulations implementing the Madrid Protocol for the Community trade mark system also will enter into force, pursuant to the information notice published by the Commission in OJ EC L 256 of 3.8.2004, p. 23. Thus, the following Regulations will enter into force on the 1st of October 2004:
- Council Regulation (EC) No 1992/2003 of 27.10.2003 amending the Community Trade Mark Regulation (OJ EC L 296 of 14.11.2003, p. 1; also published in OJ OHIM 2004, 98);
- Commission Regulation (EC) No 781/2004 of 26.4.2004 amending the Fees Regulation (OJ EC L 123 of 27.4.2004, p. 85; also published in OJ OHIM 2004, 886);
- Commission Regulation (EC) No 782/2004 of 26.4.2004 amending the Implementing Regulation (OJ EC L 123 of 27.4.2004; also published in OJ OHIM 2004, 840).
In its instrument of accession, the European Community has declared that for the designation of the European Community, an individual fee has to be paid, the amount of which is laid down in that declaration and in Articles 11 and 12 of the Fees Regulation and which is expressed in Euro. This fee must be paid to the International Bureau of WIPO in Swiss Francs. Based on the official exchange rate of the United Nations, the Director General of WIPO has fixed the equivalents of the amounts in Swiss Francs as follows (http://www.wipo.int/madrid/en/notices/index.jsp):
ITEM
Amount (in Swiss francs)
- for three classes of goods and services 2855
- for each additional class 609
Where the mark is a collective mark:
- for three classes of goods or services 5595 - for each additional class 1218
- for three classes of goods or services 3502
- for each additional class 761
Where the mark is a collective mark.
- for three classes of goods or services 7308 - for each additional class 1523
International
Application or
Subsequent
Designation
Renewal Page 363
The Office will be ready to apply the Madrid Protocol as from the 1st of October 2004. This means that as from that date,
- an international application based on a CTM application or registered CTM may be filed at the OHIM in its capacity as an office of origin; and
- the European Community may be designated in an international application.
International applications based on a CTM application or registered CTM may be filed as from the 1st of October 2004 with the OHIM. The date of receipt at the OHIM is controlling. Applications received before that date will not be treated. Subsequent designations may only be filed with the OHIM if they relate to an international application for which the OHIM was the office of origin and which has led to an international registration. That means that in reality, subsequent designations can be filed with the OHIM only some time after October 2004.
The European Community may be designated in an international application as from the 1stof October 2004. The date of international registration by WIPO is controlling. As from the 1st of October 2004, the European Community may also be designated in a subsequent designation. The European Community has not made use of the faculty under Article 14 (5) of the Madrid Protocol. That means that international registrations whose date of registration is prior to October 2004 may be the subject of a subsequent designation of the European Community.
It is recalled that for international applications and subsequent designations filed at the OHIM, it is compulsory to use the official form, that is, either the WIPO Form MM 2 or MM 4 or the OHIM Form EM 2 or EM 4, which is a slightly adapted version of the WIPO Form, translated in all the other 17 official languages of the European Community. The OHIM Form EM 2 (not EM 4) is furthermore also available in the three languages under the Madrid Protocol, i.e. French, English, and Spanish. For international applications filed at the OHIM, it is recommended to use the OHIM version EM 2 which contains some extra check boxes which facilitate the procedure before the OHIM.
All language versions of EM 2 and EM 4 are being placed on the website of the Office (OAMI Online, under http://oami.eu.int/en/mark/marque/form.htm) by mid September so that applicants can familiarize with the forms well in advance. Some language versions of the forms have already been published in issue No 7/8 of the Official Journal of the Office.
Details of the application of the Madrid Protocol by the Office are explained in the Draft for amendment of the Examination Guidelines, which is available on the website of the Office as well. In particular, paragraphs 13.B. 1.1 and 13.B. 1.2 of the Draft Guidelines should be consulted, which explain item by item how to complete the respective OHIM Forms.
Wubbo de Boer
President Page 364
Over the past two years, the Office managed to speed up the examination process so that a substantial portion of all Community trade mark applications can now pass all the examination steps, namely filing date, classification, formalities and absolute grounds examination, within a couple of months. Translations of the application into the remaining official languages of the European Community, as well as establishment of search reports pursuant to Article 39 CTMR, take place separately. The situation today is that for all Community trade mark applications (for those which have passed the examination process without problems, as well as for those for which a dialogue with the applicant was necessary) there is a period of several months needed to prepare translations, complete searches and other ancillary tasks before the application can be published in the Community Trade Marks Bulletin.
The Office has thus decided to send an information letter to the applicant once the examination procedure has been completed with a positive result. Whilst the Office reserves the right to reopen the examination proceedings as long as registration has not yet taken place, this letter will give applicants the assurance that their application has passed the examination process and that the remaining period will only be needed to for technical issues. In particular, where the application was in order, the applicant should be informed as soon as possible.
As from the end of October 2004, once the mark has been found acceptable for publication, the Office will send the following letter:
"The examination of your application has been successfully completed. It will now be published once the translations and search reports are available. You will be informed in due time of the particulars of the publication. Meanwhile you can find more information on the situation of your file under http://oami.eu.int/en/database/ctm-online.htm.
This letter is sent for information purposes only. The Office reserves the right to re-open the examination if new aspects arise. "
Wubbo de Boer
President Page 365
THE PRESIDENT OF THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS),
Having regard to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, in particular Article 119 (2) (a) thereof, hereinafter referred to as "Council Regulation No 40/94",
Having regard to Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council regulation (EC) No 40/94 on the Community trade mark (hereinafter referred to as "Commission Regulation No 2868/95", in particular Rules 6 (4), 8 (4), 28 (4), 108 (3) and 110 (7) thereof,
Whereas by Decision No EX-03-5 of 20 January 2003 (OJ OHIM 2003, 869), the President of the Office has determined that instead of the originals of the documents referred to in Rule 6 (1) of Commission Regulation No 2868/95, accurate photocopies thereof may be filed;
Whereas by the above mentioned decision, the President of the Office has determined that, when claiming seniority, the evidence to be provided by the applicant for or proprietor of a Community trade mark may also be made available to the Office from a document other than the original or a photocopy of the certified copy of the earlier registration to which Rule 8 (1) and Rule 28 (1) of Commission Regulation No 2868/95 refer, if the document constitutes an extract or printout of an official publication or database published by the office which registered the earlier national mark, or of a database or data carrier which is based on data supplied by that office, provided that the document contains the required indications;
Whereas the above mentioned decision of the President should also be extended to seniority claims made under Rule 108 (1) and Rule 110 (1) of Commission Regulation No 2868/95 by the holder of an International Application or Registration designating the European Community, made under the Protocol relating to the Madrid Agreement concerning the international registration of marks adopted at Madrid on 27 June 1989 (herein- after referred to as the Madrid Protocol);
Whereas Rules 6 (4), 8 (4) , 28 (4) , 108 (3) and 110 (7) of Commission Regulation No 2868/95 provide that the evidence to be furnished by the applicant on claiming priority or seniority may consist of less than is required in the other relevant provisions of the Implementing Regulation, provided that the information required is available to the Office from other sources;
Whereas the information required to be contained in an original priority document referred to in Rule 6 (1) of the Commission Regulation No 2868/95, namely the file number, the filing date, the name of the applicant or proprietor, the representation of the mark and the list of goods and services, can be available on the Internet Websites of some of the central industrial property offices of States party to the Paris Convention for the Protection of Industrial Property or to the Agreement establishing the World Trade Organization; Page 366
Whereas the information required to be contained in an original seniority document referred to in Rules 8 (1) , 28 (1) , 108 (1) and 110 (1) of Commission Regulation No 2868/95, namely the Member State or Member States in or for which the earlier mark is registered, the priority, application or registration date of the earlier mark, the number of the earlier registration, the name of the proprietor of the earlier registration, the representation of the trade mark and the indication of the goods and services for which the earlier mark is registered, can be available on the Internet Websites of some of the central industrial property offices of the Member States in or for which the mark is registered or, concerning international registrations with effects in a Member State, on the Internet Website of the International Bureau of the World Intellectual Property Organization (hereinafter referred to as the International Bureau);
Whereas if this is the case, the examiner will be in a position to access this information of his own motion for the purposes of examining both the priority and the seniority claim;
Whereas if the required information is not available on such a Website, either because the relevant industrial property office does not make this information available or because the information cannot be found or retrieved, the applicant for a Community trade mark remains under the obligation to furnish the documents referred to in Rules 6 (1), 8 (1), 28 (1), 108 (1) and 110 (1) of Commission Regulation No 2868/95, either in the original or in an accurate photocopy, extract or printout;
Whereas it is not appropriate to determine a list of offices which make the required information available on their Websites, because such a list would be subject to frequent changes;
Whereas the applicant himself is in a position to verify, when claiming priority or seniority, whether the required information is available on a Website, so that he knows in advance whether he needs to furnish an priority or seniority document,
HAS ADOPTED THE FOLLOWING DECISION:
The evidence to be provided by the applicant when claiming priority may consist of less than what is required under Rule 6 (1) of Commission Regulation No 2868/95, provided that the information required is available to the Office from a Website of a central industrial property office of a State party to the Paris Convention for the Protection of Industrial Property or to the Agreement establishing the World Trade Organization.
(1) Where priority is claimed, and where the documents referred to in Rule 6 (1) of Commission Regulation No 2868/95 have not already been submitted by the applicant, the Office will verify of its own motion whether information on the file number, the filing date, the name of the applicant or proprietor, the representation of the mark and the list of goods and services of the earlier trade mark application the priority of which is claimed is available on the Website of the central industrial property office of the State in or for which that earlier trade mark application is claimed to have been filed. Page 367
(2) Where the required information is available to the Office on such Website, the Office will make a note to this extent in the file of the Community trade mark application. Otherwise, the Office will issue an invitation pursuant to Rule 9 (3) (c) of Commission Regulation No 2868/95 to furnish the documents referred to in Rule 6 (1) of Commission Regulation No 2868/95.
The application of Rule 6 (3) of the Implementing Regulation shall remain unaffected, if and to the extent that the applicant furnishes, or must furnish, the documents referred to in Rule 6 (1) of the Implementing Regulation
Article 3 of President's Decision No EX-03-5 of 20 January 2003 (OJ OHIM 2003, 869) shall be applicable to seniority claims made by the holders of International Applications or Registrations designating the European Community under the Madrid Protocol
The evidence to be provided by the applicant when claiming seniority may consist of less than what is required under Rules 8 (1) , 28 (1) , 108 (1) and 110 (1) of Commission Regulation No 2868/95, provided that the information required is available to the Office from a Website of a central industrial property office of a Member State in or for which the mark is registered or, concerning international registrations with effects in a Member State, of the International Bureau.
(1) Where seniority is claimed, and where the documents referred to in Rules 8 (1), 28 (1) , 108 (1) and 110 (1) of Commission Regulation No 2868/95 have not already been submitted, the Office will verify of its own motion whether information on the Member State or Member States in or for which the earlier mark is registered, the priority, application or registration date of the earlier mark, the number of the earlier registration, the name of the proprietor of the earlier registration, the representation of the trade mark and the indication of the goods and services for which the earlier mark is registered is available on the Website of the central industrial property office of the Member State in or for which that earlier trade mark is claimed to be registered or, concerning international registrations with effects in a Member State, of the International Bureau.
(2) Where the required information is available to the Office on such Website, the Office will make a note to this extent in the file of the trade mark application or registration. Otherwise, the Office will issue an invitation pursuant to Rule 9 (3) (d) and Rule 28(2) of Commission Regulation No 2868/95 to furnish the documents referred to in Rules 8 (1), 28 (1), 108 (1) or 110 (1) of Commission Regulation No 2868/95. Page 368
This decision shall enter into force on the day following its adoption. It shall be published in the Official Journal of the Office.
Done at Alicante, 1 June 2005
Wubbo de Boer
President Page 369
THE PRESIDENT OF THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS),
Having regard to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, in particular Article 119 (2) (a) thereof,
Having regard to the Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (hereinafter referred to as "the Implementing Regulation"), as amended by Commission Regulation No 1041/2005 of 29.6.2005, in particular Rule 66 (2) thereof,
Whereas Rule 66 (1) of the Implementing Regulation, as amended, no longer prescribes publishing the notice of public notification in the Community Trade Marks Bulletin;
Whereas the Website of the Office allows parties to the procedures to get real-time and free-of-charge access to notices of public notification,
HAS ADOPTED THE FOLLOWING DECISION:
Public notification under Rule 61 (2) (e) and Rule 66 of the Implementing Regulation shall be effected on the Website of the Office, in a subsection specifically dedicated thereto.
Public notification shall be effected by publication of the following particulars:
-
an indication of the proceedings to which the publication relates,
-
where applicable, the file number of the Community trade mark application or the registration number of the Community trade mark and the file number of the proceedings,
-
the name of the addressee,
-
the address of the addressee known to the Office,
-
the type of document to be notified,
-
the date of the document,
-
the place where the document can be inspected,
-
the date on which the notice is made available on the Website.
The time limit of one month on the expiry of which the document shall be deemed to have been notified shall start on the day on which the notice is made available on the Website.
Public notification shall be effected in the language of the proceedings to which the notification relates. Page 370
Decision No EX-96-5 of the President of the Office of 30 July 1996 (OJ OHIM 1996, 1451) is repealed.
This Decision shall enter into force on 1 August 2005. It shall be published in the Official Journal of the Office.
Done at Alicante, 27 July 2005
Wubbo de Boer
President Page 371
The Community Trade Mark Regulation provides for the renewal of Community trade mark (CTM) registrations 10 years after the date of filing. The first Community trade marks will be up for renewal at the end of April 2006. For these marks, the period to pay the renewal fee without surcharge (Article 47 (3), 1st sentence, CTMR) will start on November 2005. For example, for a Community trade mark application with a filing date of 1 April 2006 or any date within the month of April 1996, the six-month period for requesting renewal starts on 1 November 2005 and ends on 30 April 2006. As of September 2005, the Office will start sending the notices informing about the upcoming renewal referred to in Article 47 (2) CTMR. Failure to give such notice will not affect the expiry of the registration if the mark is not renewed.
There are a small number of Community trade mark applications with a 1 April 1996 or a later filing date which still have not matured to registration and will not have so by the tenth anniversary of the filing date, for example because they are involved in opposition proceedings pending before the Boards of Appeal or the Court of First Instance. If these marks are registered later than ten years counted from their filing date, they also have to be renewed in order to benefit from the protection until the next (second) renewal date. It follows from Article 46, second sentence, CTMR, that the maintenance of a registration of a Community trade mark for the period between the 10th and the 20th anniversary of the filing date always requires a renewal.
For these cases the procedure will be as follows: The holders of such Community trade mark applications will not receive the notice referred to in Article 47 (2) CTMR. Rather, once the application becomes ready for registration, the Office will ask for the renewal fee together with the registration fee. To this end the Office will invite the applicant to pay the renewal fee, including any additional class fees, in the invitation pursuant to Rule 23 (2) IR to pay the registration fee. The applicant will then have two months to pay the registration fee (including any additional class fees for the registration) as well as the renewal fee (including any additional class fees for the renewal). If these fees are not paid in full, the Office will issue a further notification pursuant to Rule 23 (3) IR, setting a further time limit of two months. For the payment during this period, the surcharge for the registration fee of 25 % pursuant to Article 2 point 11 of the Fees Regulation applies, but no surcharge is due for the renewal fee. If the registration fee is not paid within the time limit given, the Community trade mark application shall be deemed to be withdrawn (Article 45, last sentence, CTMR). If the registration fee is paid but not the renewal fee, the Office will register the Community trade mark but immediately afterwards issue a notice that the registration has expired.
Wubbo de Boer
President Page 372
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In its judgment of 7 July 2005 in Case C/418-02, "Praktiker", the Court of Justice has ruled on the registrability of retail services. It has held that services provided in connection with retail trade in goods constitute "services" for which a national trade mark can be registered in accordance with Article 2 of Council Directive 89/104/EEC of 21.12.1988. Furthermore it held that "for the purposes of registration of a trade mark for such services, it is not necessary to specify in detail the services in question. However, details must be provided with regard to the goods or types of goods to which those services relate."
-
As a consequence, the practice of the Office regarding registrability of trade marks for retail as a service has again to be reviewed (see Communication No 3/01 of 12.3.2001, OJ OHIM 2001, 1222) in particular as regards the specification of the type of retail concerned. In pursuance of paragraph 2 of the operative part of the "Praktiker" judgment, the Office considers the activity of retail in goods as a service for which protection of a Community trade mark can be obtained and that that service does not consist in the mere act of selling the goods, but in the services rendered around the actual sale of the goods, which are circumscribed in the explanatory note to class 35 of the Nice Classification by the terms "the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods." It is not required to specify in what activities these services exactly consist. Nor is it required to indicate the type of establishment undertaking the retail sales (for example, a supermarket or a department store).
-
On the other hand, the "Praktiker" judgment requires to "provide details with regard to the goods or types of goods to which those services relate". This means that specifications merely claiming "retail services", the exact wording of the explanatory note to class 35, or "retail services of a supermarket", while previously accepted by the Office, are no longer acceptable.
-
What is required is a reference to the goods or type of goods sold at retail. It has to be observed that the judgment does not require an exact specification of the goods to be sold, but merely the provision of details concerning the goods or types of goods. The Office will therefore accept any reference to the goods expressed in broad categories, regardless of whether they could be properly classified as goods under the goods classes. The reasoning is that the protection for marks claiming retail services is exactly not conferred to the actual act of sale of those goods. Indications such as "retail trade in building, home improvement and gardening tools for the do it yourself sector" (see paragraph 11 and 50 of the judgment), foodstuff, or any other general category of goods, as long as the type of goods is readily ascertainable, are acceptable. It is equally acceptable to refer to class headings. However, it is not acceptable to refer to goods falling into a particular class or into a number of classes, for example "retail services in respect of goods falling in class 9" or "retail services in respect of goods in classes 7, 9, 12, and 16". Page 373
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Pending Community trade mark applications that do not comply with the above principles will be objected to. Applicants are also free to limit the list of goods and services during the examination procedure, until registration, on their own volition. Registered Community trade marks may be partially surrendered pursuant to Article 49 CTMR by limiting the list of goods and services in the appropriate manner.
-
The Office will draw the appropriate conclusions from these principles when it comes to judging the similarity of goods and services, or the fulfilment of the use requirement. "Retail services" as such will not be considered similar to any goods. Conflicts between trade marks claiming retail services for different goods will be judged according to the normal criteria. Earlier rights invoked in opposition proceedings, or Community trade marks attacked on revocation, will be considered to be registered or limited in relation to retail services for those goods which have actually been sold at retail.
-
The same principles set out above will be applied by the Office to similar services rendered in connection with other forms exclusively related to the sales of goods, such as wholesale, Internet shopping, or catalogue or mail order services (to the extent that these fall into class 35). Such services have in common with retail services that they exclusively consist of services around the actual sale of goods, so that the same considerations apply. Furthermore, as the sales of goods is not a service, the term "sales" as such, whether or not coupled with the indications of the type of goods sold, is not sufficient.
-
On the other hand, the Office will not apply the above principles to other services which are not limited to services around the sales of goods, or which do not fall into class 35, such as distribution services falling into class 39, transport or repair, or training or education, which may have different goods or activities as their subject but do not consist in services ancillary to the purchase of goods. Those services have in common that they had already been acceptable, and could always have been properly classified, even before the Office started accepting Community trade mark applications for retail services.
Wubbo de Boer
President Page 374
Further to Communication No 5/05 of the President of the Office of 27 July 2005 on renewal requests, it is useful to clarify the Office practice concerning the renewal of Community trade marks, which can be requested as of 1 November 2005.
-
Commission Regulation No 1041/2005 (OJ OHIM 2005, 1098), which has entered into force on 25 July 2005, provides for amendments of Rule 30 and alleviates certain formalities for renewal requests.
The Office wishes to draw the attention to the following:
-
) Where a renewal request is filed on behalf of the trade mark proprietor filing of an authorisation is not required (see Rule 76 as amended and Communication No 2/03 of 10.2.2003).
-
) Where a renewal request is filed by a person other than the proprietor an authorisation (see Article 47 (1) CTMR) will have to exist in favour of the third person filing the request. However this does not need to be filed with the Office unless, in exceptional circumstances, the Office requests this. This follows from Rule 30 (1) as amended.
-
) If a payment of the renewal fee, by bank transfer, reaches the Office which contains the name of the payor, the registration number of the CTM and the indication "renewal fee", this constitutes a valid request (see Rule 30 (3)) and no further formalities are to be complied with.
-
) For holders of a current account, the renewal fee will be debited only on request, not automatically. A request to debit the current account with the renewal fees constitutes a valid renewal request.
-
) Renewal can be requested for more than one mark held by the same proprietor (new Rule 30 (8)).
-
) A renewal form has been made available by the Office on its website (http:/oami.eu.int) and has been published in the Official Journal of the Office, issue 10/2005.
-
-
On 22 October, Commission Regulation No 1687/2005 amending the Fees Regulation entered into force.
-
) The renewal fee has been substantially lowered. The amount of the fee is 1500 euro for the renewal of an individual mark, plus 400 euro for each class exceeding three, and 3000 euro for the renewal of a Community collective mark, plus 800 euro for each class exceeding three.
-
) The basic renewal fee for the renewal of an individual mark is only 1350 euro (instead of 1500 euro), if the renewal is requested electronically. The e-renewal tool is available on the Website of the Office.
-
) Commission Regulation No 1687/2005 has also abolished cheques and cash payments as admissible means of payment. This applies for all fees to be paid under Regulation No 2869/1995, ie for all fees in proceedings related to Community trade marks. Page 375
-
) Proprietors of Community trade marks are thus encouraged to use the e-renewal tool so as to benefit from the 150 euro e-renewal discount, but should in no case pay renewal fees by cheque.
-
-
The existing Renewal Guidelines (OJ 2004, 32) do not yet take into account these recent legislative and technological developments. They will be updated soon.
Wubbo de Boer
President Page 376
Communications No 5/99, No 7/99, No 7/01, No 6/02 and No 14/04 contained lists of Community trade mark courts which have been notified to the European Commission by Austria, Belgium, Denmark, Germany, Ireland, Luxembourg, the Netherlands, Portugal, Sweden and the United Kingdom, Spain, Greece, France, Finland, Italy, Estonia, Lithuania, Slovakia and the Czech Republic. Meanwhile the European Commission has received a notification of the change of Community trade mark courts in the United Kingdom.
The table in the annex to this Communication contains a new consolidated list of the Community trade mark courts of first and second instance which have been notified to the European Commission so far.
Wubbo de Boer
President Page 377
List of Community trade mark courts Status: 24.11.2005
(1) of first instance
(2) of second instance
Belgique / Belgi
(1) Tribunal de Commerce de Bruxelles/Rechtbank van Koophan- del te Brussel
(2) Cour d'appel de Bruxelles/Hof van Beroep te Brussel
Česká republika
(1) Městský soud v Praze
(2) Vrchní soud v Praze
Danmark
(1) Sø- og Handelsretten, København
(2) Højesteret, København
Deutschland
(1) Landgericht Mannheim ... (2) Oberlandesgericht Karlsruhe
Landgericht Stuttgart... Oberlandesgericht Stuttgart
Landgericht Nrnberg-Frth... Oberlandesgericht Nrnberg
Landgericht Mnchen ... Oberlandesgericht Mnchen
Landgericht Berlin... Kammergericht Berlin
Landgericht Bremen... Hanseatisches Oberlandesgericht Bremen
Landgericht Hamburg... Hanseatisches Oberlandesgericht Hamburg
Landgericht Frankfurt am Main... Oberlandesgericht Frankfurt am Main
Landgericht Rostock... Oberlandesgericht Rostock
Landgericht Braunschweig... Oberlandesgericht Braunschweig
Landgericht Dsseldorf... Oberlandesgericht Dsseldorf
Landgericht Koblenz... Oberlandesgericht Koblenz
Landgericht Frankenthal (Pfalz)... Pflzisches Oberlandesgericht Zweibrcken
Landgericht Saarbrcken... Saarlndisches Oberlandesgericht Saarbrcken
Landgericht Leipzig... Oberlandesgericht Dresden
Landgericht Magdeburg... Oberlandesgericht Naumburg
Landgericht Kiel ... Schleswig-Holsteinisches OberlandesgerichtPage 378
Landgericht Erfurt
Thringer Oberlandesgericht
Eesti
(1) Harju Maakohus
(2) Tallinna Ringkonnakohus
Ellas
(1) Tribunal de première instance d'Athènes
(2) Cour d'appel d'Athènes
Tribunal de première instance de
Thessaloniki Cour d'appel de Thessaloniki
España
(1) Juzgados de lo Mercantil de Alicante
(2) Audiencia Provincial de Alicante
France
(1) Tribunal de grande instance de Paris
(2) Cour d'appel de Paris
Ireland
(1) The High Court
(2) The Supreme Court
Italia
(1) Tribunale di Bari
(2) Corte d'appello di Bari Tribunale di Bologna
Corte d'appello di Bologna Tribunale di Catania Corte d'appello di Catania Tribunale di Firenze Corte d'appello di Firenze Tribunale di Genova Corte d'appello di Genova Tribunale di Milano Corte d'appello di Milano Tribunale di Napoli Corte d'appello di Napoli Tribunale di Palermo Corte d'appello di Palermo Tribunale di Roma
Corte d'appello di Roma Tribunale di Torino Corte d'appello di Torino Tribunale di Trieste Corte d'appello di Trieste Tribunale di Venezia Corte d'appello di Venezia
Lietuva
(1) Vilniaus apygardos teismas
(2) Apeliacinis Teismas Page 379
Luxembourg
(1) Tribunal d'Arrondissement de
Luxembourg
(2) Cour Supérieure de Justice
Nederland
(1) Arrondissementsrechtbank te 's - Gravenhage
(2) Gerechtshof te 's - Gravenhage
sterreich
(1) Handelsgericht Wien
(2) Oberlandesgericht Wien
Polska
(1) Sąd Okręgowy w Warszawie
(2) Sąd Apelacyjny w Warszawie
Portugal
(1) Tribunal do Comércio de Lisboa
(2) Tribunal da Relação de Coimbra
Tribunal do Comércio de Vila Nova de Gaia
Tribunal da Relação de Evora
Tribunal da Relação de Faro
Tribunal da Relação de Guimarães
Tribunal da Relação de Lisboa
Tribunal da Relação de Porto
Slovenija
(1) Okrožno sodišče v Ljubljani
(2) Višje sodišče v Ljubljani
Slovensko
(1) Okresný súd v Bratislave I
(2) Krajský súd v Bratislave Okresný súd v Banskej Bystrici Krajský súd v Banskej Bystrici Okresný súd v Košiciach I Krajský súd v Košiciach
Suomi / Finland
(1) Helsingin krjikeus
(2) Helsingin hovioikeus
Sverige
(1) Stockholms tingsrtt
(2) Svea hovrtt, Stockholm
United Kingdom
(1) England and Wales:
(2) The Court of Appeal The High Court
The Patents County Court Page 380
Birmingham County Court
Bristol County Court
Cardiff County Court
Leeds County Court
Liverpool County Court
Manchester County Court
Newcastle upon Tyne County Court
Scotland:
The Court of Session
Northern Ireland:
The High Court Page 381
(Decisions and Communications reproduced in this book are in bold type)
No ADM-95-23 of 22. 12. 1995 concerning the days and hours on which the Office is open for receipt of documents and on which ordinary mail is not delivered.. OJ 1995, 487
No EX-96-1 of 11. 1. 1996 concerning the conditions for opening current accounts at the Office (as amended by Decision No EX-96-7 of 30. 7. 1996, Decision No EX-03-1 of 20. 1. 2003 and Decision No EX-06-1 of 12. 1. 2006)... OJ 1996, 49
No EX-96-3 of 5. 3. 1996 concerning the evidence to be provided on claiming priority or seniority... OJ 1996, 395
No EX-96-7 of 30. 7. 1996 amending Decision No EX-96-1 concerning the conditions for opening current accounts at the Office... OJ 1996, 1455
No EX-96-9 of 25. 10. 1996 laying down the charges to be paid for the data concerning Community trade mark applications for 1997... OJ 1996, 1711
No ADM-96-29 of 8. 11. 1996 concerning the days on which the Office is not open for receipt of documents and on which ordinary mail is not delivered.,.. OJ 1996, 1713
No EX-96-11 of 20. 11. 1996 laying down the charges to be paid for the Community Trade Marks Bulletin... OJ 1997, 7
No EX-96-12 of 27. 11. 1996 laying down the charges to be paid for the Directory of Professional Representatives before the OHIM... OJ 1997, 115
No EX-97-1 of 1. 4. 1997 determining the form of decisions, communications and notices from the Office.. OJ 1997, 423
No ADM-97-39 of 31. 10. 1997 concerning the days on which the Office is not open for receipt of documents and on which ordinarymail is not delivered ....OJ 1997, 1367
No ADM-98-22 of 29. 6. 1998 amending Decision No ADM-97-39 of 31. 10. 1997 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered,...OJ 1998, 925
No EX-98-1 of 30. 6. 1998 to adopt Guidelines concerning proceedings before the Office... OJ 1998, 767
No ADM-98-31 of 4. 11. 1998 concerning the days on which the Office is not open for the receipt of documents and on whichordinary mail is not delivered... OJ 1998, 1377
No EX-98-3 of 26. 11. 1998 to adopt Guidelines concerning proceedings before the Office... OJ 1999, 23
No EX-99-1 of 12. 1. 1999 laying down the compensation and fees granted to witnesses and experts (as amended by Decision No EX-03-2 of 20. 1. 2003)... OJ 1999, 507Page 382
No ADM-99-23 of 31. 5. 1999 amending Decision No ADM-98-31 of 4. 11. 1998 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered... OJ 1999, 1123
No EX-99-3 of 4. 11. 1999 to adopt Guidelines concerning proceedings before the Office ... OJ 2000, 7
No ADM-99-34 of 9. 11. 1999 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered... OJ 2000, 9
No ADM-00-33 of 27. 11. 2000 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered... OJ 2001, 7
No EX-00-1 of 27. 11. 2000 concerning entries in the Register of Community Trade Marks .......OJ 2001, 295
No ADM-01-42 of 29. 6. 2001 amending Decision No ADM-00-33 of 27. 11. 2000 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered....OJ 2001, 1631
No EX-01-1 of 27. 7. 2001 concerning payment of fees at the premises of the Office by credit cards (as amended by Decision No EX-03-3 of 20. 1. 2003).... OJ 2002, 199
No ADM-01-56 of 20. 11. 2001 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered... OJ 2002, 7
No EX-02-1 of 19. 4. 2002 to adopt Guidelines concerning proceedings before the Office ....OJ 2002, 1141
List of charges payable to the Office - Charges fixed by the President of the Office pursuant to Article 3 of the Fees Regulation (as per 1. 4. 1999 ).... OJ 1999, 730
No ADM-02-37 of 30. 10. 2002 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered..... OJ 2003, 11
No EX-02-2 of 7. 11. 2002 concerning the electronic filing of Community trade mark application (as amended by Decision No EX-04-3 of 26. 11. 2004 and Decision No EX-05-3 of 10. 10. 2005).....OJ 2003, 15
No EX-03-1 of 20. 1. 2003 amending Decision No EX-96-1 of 11. 1. 1996 concerning the conditions for opening current accounts at the Office. OJ 2003, 1043
No EX-03-02 of 20. 1. 2003 amending Decision No EX-99-1 of 12. 1. 1999 laying down the compensation and fees granted to witnesses and experts.....OJ 2003, 855
No EX-03-3 of 20. 1. 2003 amending No EX-01-1 of 27. 7. 2001 concerning payment of fees at the premises of the Office by credit cards..... OJ 2003, 859
No EX-03-5 of 20. 1. 2003 concerning the formal requirements of a priority or seniority claim... OJ 2003, 869Page 383
No EX-03-6 of 20. 1. 2003 determining the insignificant amount of fees and charges ......OJ 2003, 877
No EX-03-7 of 20. 2. 2003 to adopt the Guidelines concerning proceedings before Office .....OJ 2003, 1055
No ADM-03-40 of 28. 10. 2003 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered (amended by Decision No ADM-04-02 of 15. 1. 2004) .....OJ 2003, 2287
No EX-03-10 of 27. 11. 2003 to adopt the Guidelines concerning proceedings before Office ......OJ 2004, 7
No ADM-04-02 of 15. 1. 2004 amending Decision No ADM-03-40 of 28. 10. 2003 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered.... OJ 2004, 423
No EX-04-1 of 26. 4. 2004 adopting Guidelines for the proceedings relating to a declaration of invalidity of a registered Community design ....OJ 2004, 727
No EX-04-2 of 10. 5. 2004 to adopt the Guidelines concerning proceedings before Office ....OJ 2004, 729
No EX-04-4 of 25. 11. 2004 to adopt the Guidelines concerning proceedings before Office....OJ 2005, 7
No EX-04-3 of 26. 11. 2004 concerning the electronic filing of Community trade mark applications.... OJ 2005, 315
No EX-04-5 of 30. 11. 2004 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered (amended by Decision No EX-05-2 of 11. 5. 2005 and Decision No EX-05-1 of 30. 3 .2005)....OJ 2005, 9
No EX-04-6 of 14. 12. 2004 concerning notification by technical means ....OJ 2005, 1207
No EX-05-1 of 30. 3. 2005 amending Decision No EX-04-5 of 30. 11. 2004 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered....OJ 2005, 851
No EX-05-2 of 11. 5. 2005 amending Decision No EX-04-5 of 30. 11. 2004 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered....OJ 2005, 947
No EX-05-5 of 1. 6. 2005 concerning the evidence to be provided when claiming priority or seniority ....OJ 2005, 1083
No EX-05-6 of 27. 7. 2005 concerning public notification... OJ 2005, 1213
No EX-05-3 of 10. 10. 2005 concerning electronic filing of sound marks... OJ 2006, 7
No EX-05-4 of 10. 10. 2005 concerning the keeping of files.... OJ 2006, 11
No EX-05-7 of 31. 10. 2005 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered.... OJ 2005, 1399Page 384
No EX-06-1 of 12. 1. 2006 amending Decision No EX-96-1 of 11. 1. 1996 concerning the conditions for opening current accounts at the Office ....OJ 2006, 325
No 1/95 of 18. 9. 1995 on professional representation OJ 1995, 17 No 2/95 of 12. 12. 1995 concerning the list of professional representatives.... OJ 1995, 465
No 1/96 of 16. 1. 1996 on the application form for a Community trade mark....OJ 1996, 7
No 2/96 of 22. 3. 1996 concerning professional representation OJ 1996, 591 No 3/96 of 22. 3. 1996 on the evidence required when claiming priority or seniority ....OJ 1996, 595
No 4/96 of 19. 7. 1996 concerning professional representation....OJ 1996, 1273
No 5/96 of 8. 8. 1996 concerning current accounts.... OJ 1996, 1461
No 6/96 of 8. 8. 1996 concerning payment of fees by cheque... OJ 1996, 1275
No 7/96 of 18. 12. 1996 concerning a general interruption in the delivery of mail in Spain ....OJ 1997, 117
No 1/97 of 17. 6. 1997 concerning examination of seniority claims... OJ 1997, 751
No 2/97 of 3. 7. 1997 concerning payment of application fees.... OJ 1997, 759
No 3/97 of 17. 12. 1997 concerning the protection of trade marks on international exhibitions.... OJ 1998, 179
No 4/97 of 23. 6. 1997 concerning professional representation..... OJ 1997, 1183
No 5/97 of 26. 9. 1997 concerning the translation of applications and their examination..... OJ 1997, 1379
No 6/97 of 15. 10. 1997 concerning a general interruption and subsequent dislocation in the delivery of mail in Spain....OJ 1997, 1395
No 1/98 of 10. 3. 1998 concerning the days on which the central industrial property offices of the Member States and the Benelux Trade Mark Office were or are closed in 1997 and 1998 ....OJ 1998, 705
No 2/98 of 8. 4. 1998 concerning the examination of threedimensional marks.... OJ 1998, 701
No 3/98 of 20. 4. 1998 on the translation of applications.... OJ 1998, 699
No 4/98 of 6. 7. 1998 on the indication of the filing date in the receipt....OJ 1998, 885
No 5/98 of 16. 6. 1998 concerning a general interruption in the delivery of mail in Spain....OJ 1998, 891
No 6/98 of 14. 11. 1998 concerning the examination of seniority claims....OJ 1999, 7
No 7/98 of 3. 8. 1998 concerning the opening of a letterbox for the deposit of documents at the Office.... OJ 1998, 929
No 8/98 of 29. 9. 1998 on the competent authority referred to in Article 82 (2) CTMR in the United Kingdom....OJ 1998, 1381
No 9/98 of 27. 10. 1998 on the introduction of the euro.... OJ 1998, 1383
No 10/98 of 23. 11. 1998 on the publication of the Selected instruments relating to the Community trade mark ....OJ 1999, 15Page 385
No 11/98 of 15. 12. 1998 concerning the publication of registrations of Community trade marks,........ OJ 1999, 271
No 1/99 of 23. 3. 1999 concerning the days on which the central industrial property offices of the Member States and the Benelux Trade Mark Office are closed in 1999 .....OJ 1999, 839
No 2/99 of 7. 5. 1999 concerning professional representation..... OJ 1999, 1003
No 3/99 of 31. 5. 1999 on the publication of the Selected instruments relating to the Community trade mark in monolingual edition ......OJ 1999, 1137
No 4/99 of 8. 6. 1999 concerning national search reports.... OJ 1999, 1139
No 5/99 of 14. 7. 1999 concerning the designation of Community trade mark courts ......OJ 1999, 1141
No 6/99 of 30. 7. 1999 on the competent authority referred to in Article 82 (2) CTMR in the Netherlands..... OJ 1999, 1517
No 7/99 of 21. 9. 1999 concerning the designation of Community trade mark courts .....OJ 2000, 473
No 8/99 of 8. 11. 1999 concerning the keeping of files..... OJ 2000, 73
No 9/99 of 8. 12. 1999 concerning the revised version of the Application Form....OJ 2000, 77
No 10/99 of 8. 12. 1999 concerning the claiming of priority..... OJ 2000, 477
No 1/00 of 25. 2. 2000 concerning observations under Article 41 of the Community Trade Mark Regulation .....OJ 2000, 479
No 2/00 of 25. 2. 2000 concerning seniority examination...... OJ 2000, 485
No 3/00 of 31. 3. 2000 concerning the days on which the central industrial property offices of the Member States and the Benelux Trade Mark Office are closed in 2000.....OJ 2000, 725
No 4/00 of 4. 8. 2000 concerning the German spelling..... OJ 2000, 1561
No 5/00 of 3. 8. 2000 concerning an overview of the national and Community search reports.....OJ 2000, 1569
No 6/00 of 14. 12. 2000 concerning the closure of a bank account..... OJ 2001, 645
No 1/01 of 16. 2. 2001 concerning the authentication of documents issued by the Office..... OJ 2001, 1219
No 2/01 of 27. 2. 2001 concerning the days on which the central industrial property offices of the Member States and the Benelux Trade Mark Office are closed in 2001....OJ 2001, 947
No 3/01 of 12. 3. 2001 concerning the registration of Community trade marks for retail services.... OJ 2001, 1223
No 4/01 of 19. 4. 2001 concerning national search reports....... OJ 2001, 1435
No 5/01 of 29. 6. 2001 concerning the availability of current account statements on the Internet site of the Office .....OJ 2001, 1635
No 6/01 of 13. 9. 2001 concerning extension of time limits..... OJ 2001, 1947
No 7/01 of 28. 9. 2001 concerning the designation of Community trade mark courts ....OJ 2001, 2151
No 8/01 of 3. 10. 2001 concerning extension of time limits....... OJ 2001, 2153
No 9/01 of 24. 10. 2001 concerning the conversion form..... OJ 2001, 2155
No 10/01 of 20. 12. 2001 concerning the building in Avenida Aguilera.... OJ 2002, 479Page 386
No 1/02 of 19. 2. 2002 on the competent authority referred to in Article 82 (2) CTMR in France....OJ 2002, 887
No 2/02 of 21. 2. 2002 concerning the days on which the central.industrial property offices of the Member States and the Benelux Trade Mark Office are closed in 2002 .....OJ 2002, 763
No 6/02 of 8. 5. 2002 concerning the designation of Community trade mark courts .....OJ 2002, 1631
No 7/02 of 17. 5. 2002 concerning the competent authority referred to in Article 82 (2) CTMR in Denmark.... OJ 2002, 1883
No 8/02 of 17. 6. 2002 concerning a general interruption in the delivery mail in Spain .....OJ 2002, 1635
No 4/02 of 27. 6. 2002 concerning abbreviation proposals to refer to legal texts ....OJ 2002, 1627
No 9/02 of 16. 7. 2002 concerning the 8th edition of the Nice Classification .....OJ 2002, 1885
No 11/02 of 11. 10. 2002 concerning the opening of another bank account .....OJ 2003, 21
No 1/03 of 27. 1. 2003 concerning exhibition priorities.... OJ 2003, 881
No 2/03 of 10. 2 2003 concerning processing of authorization by the Administration of Trade Marks and Design Department ....OJ 2003, 883
No 3/03 of 4. 3. 2003 concerning the days on which the central industrial property offices of the Member States and the Benelux are closed in 2003 .....OJ 2003, 1157
No 4/03 of 16. 6. 2003 concerning the use of class headings in list of goods and services for Community trade mark applications and registrations .....OJ 2003, 1647
No 5/03 of 16. 10. 2003 concerning the enlargement of the European Union in 2004 ......J 2004, 69
No 6/03 of 10. 11. 2003 concerning colour marks....... OJ 2004, 89
No 7/03 of 10. 11. 2003 concerning a general interruption in the delivery of mail in the United Kingdom .....OJ 2004, 93
No 8/03 of 18. 11. 2003 concerning the Madrid Protocol.... OJ 2004, 95
No 1/04 of 11. 2. 2004 on the competent authority referred to in Article 82 (2) CTMR in Austria .....OJ 2004, 559
No 2/04 of 11. 2. 2004 on the competent authority referred to in Article 71 (2) CTMR in Austria ....OJ 2004, 561
No 5/04 of 15. 4. 2004 concerning the days on which the central industrial property offices of the Member States and the Benelux are closed in 2004 ....OJ 2004, 807
No 4/04 of 30. 4. 2004 concerning the use of the language of filing ....OJ 2004, 831
No 6/04 of 11. 5. 2004 concerning time limits... OJ 2004, 835
No 7/04 of 28. 5. 2004 concerning the Madrid Protocol..... OJ 2004, 837
No 8/04 of 22. 9. 2004 on the competent authority referred to in Article 82 (2) CTMR and Article 71 CDR in Slovakia.... OJ 2004, 1273
No 9/04 of 15. 9. 2004 on the entry into force of the Madrid Protocol ....OJ 2004, 1387Page 387
No 11/04 of 21. 10. 2004 on non-binding information about the outcome of the examination proceedings....OJ 2005, 195
No 10/04 of 14. 12. 2004 concerning new forms.... OJ 2005, 319
No 13/04 of 21. 12 .2004 concerning the replacement of EURONICE ONLINE by EUROACE 2004 .....OJ 2005, 447
No 14/04 of 21. 12. 2004 concerning the designation of Community trade mark courts ......OJ 2005, 571
No 1/05 of 26. 1. 2005 concerning the protection of trade marks and designs on international exhibitions ......OJ 2005, 949
No 2/05 of 26. 4. 2005 on the competent authority referred to in Article 71 (2) CDR in Germany ......OJ 2005, 853
No 3/05 of 26. 4. 2005 on the competent authority referred to in Article 82 (2) CTMR in Germany .....OJ 2005, 855
No 5/05 of 27. 7. 2005 on renewal requests..... OJ 2005, 1217
No 6/05 of 16. 9. 2005 on restoration into missed time limits.... OJ 2005, 1403
No 7/05 of 31. 10. 2005 concerning the registration of Community trade marks for retail services .....OJ 2006, 15
No 8/05 of 21. 12. 2005 concerning the renewal of Community trade marks .....OJ 2006, 197
No 10/05 of 28. 11. 2005 concerning the designation of Community trade mark courts ......OJ 2006, 103
Form for entry on the list of professional representatives...... OJ 1995, 38
Application Form for a Community trade mark ....OJ 2004, 1408
Authorization Form... OJ 1995, 458
Opposition Form... OJ 1997, 192
Appeal Form..... OJ 2004, 1416
Form for request for a revocation...... OJ 2004, 1423; 2005, 1324
Form for request for a declaration of invalidity..... OJ 1998, 978
Application for an inspection of file.... OJ 2004, 1431
Renewal Form.... OJ 2005, 1306
Madrid Protocol Forms.... OJ 2004, 908
Conversion Form........ OJ 2001, 2188
Part A, Guidelines related to general provisions on proceedings before the Office ....OJ 2006, 640
Part A, Chapter 5, Professional Representation..... OJ 2000, 36
Part A, Section 6, Restitutio in Integrum........ OJ 2004, 775
Part B, Examination Guidelines.... OJ 1996, 1324;2004, 796; 2005, 48
Part C, Opposition proceedings...... OJ 2003, 1097
Part E, Section 2, Conversion...... OJ 2005, 118
Part E, Section 3, Changes in an application or registration...... OJ 2006, 469Page 388
Part E, Section 4, Transfer..... OJ 1999, 141
Part E, Section 5, Licences..... OJ 2005, 162
Part E, Section 6, Renewal ......OJ 2004, 32
Part E, Section 7, Inspection of Files..... OJ 1998, 804
Part E, Section 8, Interlocutory Revision.... OJ 1998, 866
----------------------------------------
[1] Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark
[2] Published in the Official Journal of the Office 1996, 606, 612
[3] Published in the Official Journal of the Office 1996, 1276
[4] Decision in case R 46/1998-2, published in the Official Journal of the Office 2000, 730
[5] E.g., judgement of the Court of Justice of 11.11.1997 in case C-251/9, " Sabel v Puma", published in the Official Journal of the Office 1998, 78
