Preamble

THE EUROPEAN COMMISSION,

Having regard to the Treaty on the Functioning of the European Union,

Having regard to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark [1], and in particular Article 48, Article 49(3), Article 65, Article 73, Article 96(4), Article 97(6), Article 98(5), Article 100(2), Article 101(5), Article 103(3), Article 106(3), Article 121, Article 168, Article 194(3) and Article 196(4) thereof,

Whereas:

(1) Council Regulation (EC) No 40/94 [2], which was codified as Council Regulation (EC) No 207/2009 [3], created a system specific to the Union for the protection of trade marks to be obtained at the level of the Union on the basis of an application to the European Union Intellectual Property Office (‘the Office’).

(2) Regulation (EU) 2015/2424 of the European Parliament and of the Council [4] amending Regulation (EC) No 207/2009 aligned the powers conferred therein upon the Commission with Articles 290 and 291 of the Treaty on the Functioning of the European Union. In order to conform with the new legal framework resulting from that alignment, Commission Delegated Regulation (EU) 2017/1430 [5] and Commission Implementing Regulation (EU) 2017/1431 [6] were adopted.

(3) Regulation (EC) No 207/2009 was codified as Regulation (EU) 2017/1001. For reasons of clarity and simplification, the references contained in a Delegated Regulation should reflect the renumbering of articles resulting from such a codification of the relevant basic act. Delegated Regulation (EU) 2017/1430 should therefore be repealed and the provisions of that Delegated Regulation should be laid down, with updated references to Regulation (EU) 2017/1001, in this Regulation.

(4) The procedural rules on opposition should ensure an effective, efficient and expeditious examination and registration of EU trade mark applications by the Office using a procedure which is transparent, thorough, fair and equitable. In order to enhance legal certainty and clarity, those opposition rules should take account of the extended relative grounds for refusal laid down in Regulation (EU) 2017/1001, in particular as regards the requirements for admissibility and substantiation of opposition proceedings, and be adjusted to better reflect the case-law of the Court of Justice of the European Union and to codify the practice of the Office.

(5) In order to allow for a more flexible, consistent and modern trade mark system in the Union, while ensuring legal certainty, it is appropriate to reduce the administrative burden for the parties in inter partes proceedings by relaxing the requirements for the substantiation of earlier rights in cases where the content of the relevant evidence is accessible online from a source recognised by the Office, as well as the requirement of submitting evidence in the language of the proceedings.

(6) In the interest of clarity and legal certainty, it is important to specify the requirements for amending an application for an EU trade mark in a clear and exhaustive manner.

(7) The procedural rules governing the revocation and declaration of invalidity of an EU trade mark should ensure that an EU trade mark can be revoked or declared invalid in an effective and efficient way by means of transparent, thorough, fair and equitable procedures. For the sake of greater clarity, consistency as well as efficiency and legal certainty, the procedural rules governing the revocation and declaration of invalidity of an EU trade mark should be aligned with those applicable to opposition proceedings, retaining only those differences which are required due to the specific nature of revocation and declaration of invalidity proceedings. Furthermore, requests for assignment of an EU trade mark registered in the name of an unauthorised agent should follow the same procedural path as invalidity proceedings, serving in practice as an alternative to invalidating the mark.

(8) According to settled case-law of the Court of Justice [7], unless otherwise provided, the Office enjoys discretionary powers when examining belated evidence, submitted for the purpose of either substantiating an opposition or proving genuine use of the earlier mark in the context of opposition or invalidity proceedings. In order to ensure legal certainty the relevant boundaries of such discretion should be accurately reflected in the rules governing opposition proceedings or proceedings for the declaration of invalidity of EU trade marks.

(9) In order to allow for an effective, efficient and, within the scope of the appeal defined by the parties, complete review of decisions taken by the Office in the first instance by means of a transparent, thorough, fair and impartial appeal procedure suited to the specific nature of intellectual property law and taking into account the principles laid down in Regulation (EU) 2017/1001, it is appropriate to reinforce legal certainty and predictability by clarifying and specifying the procedural rules and the parties' procedural guarantees, in particular where a defendant makes use of the right to file a cross appeal.

(10) In order to ensure an effective and efficient organisation of the Boards of Appeal, the President, the chairpersons and the members of the Boards of Appeal should, in the exercise of their respective functions conferred upon them by Regulation (EU) 2017/1001 and by this Regulation, be required to ensure a high quality and consistency of the decisions taken independently by the Boards on appeal as well as the efficiency of the appeal proceedings.

(11) In order to ensure the independence of the President, the chairpersons and the members of the Boards of Appeal as provided in Article 166 of Regulation (EU) 2017/1001, the Management Board should take the latter Article into account when adopting appropriate implementing rules to give effect to the Staff Regulations and the Conditions of Employment of Other Servants in accordance with Article 110 of the Staff Regulations.

(12) In order to enhance the transparency and predictability of the appeal proceedings, the rules of procedure of the Boards of Appeal originally laid down in Commission Regulation (EC) No 2868/95 [8] and Commission Regulation (EC) No 216/96 [9], should be set out in a single text and properly interlinked with the procedural rules applicable to the instances of the Office whose decisions are subject to appeals.

(13) For the sake of clarity and legal certainty, it is required to codify and clarify certain procedural rules governing oral proceedings, in particular relating to the language of such proceedings. It is further appropriate to provide greater efficiency and flexibility by introducing the possibility of taking part in oral proceedings by technical means and of substituting the minutes of oral proceedings by their recording.

(14) In order to further streamline proceedings and render them more consistent, it is appropriate to set out the basic structure and format of evidence to be submitted to the Office in all proceedings, as well as the consequences of not submitting evidence in accordance with that structure and format.

(15) In order to modernise the trade mark system in the Union by adapting it to the internet era, it is further appropriate to provide for a definition of ‘electronic means’ in the context of notifications and for forms of notification that are not obsolete.

(16) In the interest of efficiency, transparency and user-friendliness, the Office should make available standard forms in all the official languages of the Office for communication in proceedings before the Office, which may be completed online.

(17) For the purposes of greater clarity, consistency and efficiency, a provision on the suspension of opposition, revocation, invalidity and appeal proceedings should be introduced, laying down also the maximum duration of a suspension requested by both parties.

(18) The rules governing the calculation and duration of time limits, the procedures for the revocation of a decision or for cancellation of an entry in the Register, the detailed arrangements for the resumption of proceedings, and the details on representation before the Office need to ensure a smooth, effective and efficient operation of the EU trade mark system.

(19) It is necessary to ensure the effective and efficient registration of international trade marks in a manner that is fully consistent with the rules of the Protocol relating to the Madrid Agreement concerning the international registration of marks.

(20) Implementing Regulation (EU) 2017/1431 and Delegated Regulation (EU) 2017/1430 replaced the rules previously laid down in Regulations (EC) No 2868/95 and (EC) No 216/96 which were therefore repealed. Notwithstanding that repeal, it is necessary to continue to apply specific provisions of Regulations (EC) No 2868/95 and (EC) No 216/96 to certain proceedings that had been initiated before the date of applicability of Regulation (EU) 2017/1430 until the conclusion of those proceedings,

HAS ADOPTED THIS REGULATION:

---

[1] OJ L 154, 16.6.2017, p. 1.

[2] Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ L 11, 14.1.1994, p. 1).

[3] Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ L 78, 24.3.2009, p. 1).

[4] Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ L 341, 24.12.2015, p. 21).

[5] Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ L 205, 8.8.2017, p. 1).

[6] Commission Implementing Regulation (EU) 2017/1431 of 18 May 2017 laying down detailed rules for implementing certain provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark (OJ L 205, 8.8.2017, p. 39).

[7] Judgment of 13 March 2007, Case C-29/05P, OHIM/Kaul GmbH, (ARCOL/CAPOL), ECLI:EU:C:2007:162, paragraphs 42-44; judgment of 18 July 2013, Case C-621/11P, New Yorker SHK Jeans GmbH & Co. KG/OHIM, (FISHBONE/FISHBONE BEACHWEAR), ECLI:EU:C:2013:484, paragraphs 28-30; judgment of 26 September 2013, Case C-610/11P, Centrotherm Systemtechnik GmbH/OHIM, (CENTROTHERM), ECLI:EU:C:2013:593, paragraphs 85-90 and 110-113; judgment of 3 October 2013, Case C-120/12P, Bernhard Rintisch/OHIM, (PROTI SNACK/PROTI), ECLI:EU:C:2013:638, paragraphs 32 and 38-39; judgment of 3 October 2013, Case C-121/12P, Bernhard Rintisch/OHIM, (PROTIVITAL/PROTI), ECLI:EU:C:2013:639, paragraphs 33 and 39-40; judgment of 3 October 2013, Case C-122/12P, Bernhard Rintisch/OHIM, (PROTIACTIVE/PROTI), ECLI:EU:C:2013:628; paragraphs 33 and 39-40; judgment of 21 July 2016, Case C-597/14P, EUIPO/Xavier Grau Ferrer, ECLI:EU:C:2016:579, paragraphs 26-27.

[8] Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ L 303, 15.12.1995, p. 1).

[9] Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ L 28, 6.2.1996, p. 11).