WORLD TRADE 
ORGANIZATION 
Council for Trade-Related Aspects 
of Intellectual Property Rights IPINI1lEEC/T/2 
3 April 1996 
(96-1208) 
Original: English/FrenchlSpanisb 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
European Communities 
The present document reproduces the following laws and regulations, as notified by the European 
Communities under Article 63.2 of the Agreement (see document IP/NI1 IEEC/1/Rev .1): 
Council Regulation (EC) No. 40/94 of 20 December 1993 2 
on the Community Trademark. 
Council Regulation (EC) No. 3288/94 of 22 December 1994 38 
amending Regulation (EC) No. 40/94 on the Community trademark 
for the implementation of the agreements concluded in the 
framework of the Uruguay Round. IP/N/I/EEC/T 12 
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14. 1. 94 Official Journal of the European Communities No L 1111 
I 
(Acts whose publication is obligatory) 
COUNCIL REGULATION (EC) No 40/94 
of 20 December 1993 
on the Community trade mark 
THE COUNCIL OF THE EUROPEAN UNION, 
Having regard to the Treaty establishing the European 
Community, and in particular Article 235 thereof, 
Having regard to the proposal from the Commission (1), 
Having regard to the opinion of the European 
Parliament (2), 
Having regard to the opinion of the Economic and Social 
Committee (3), . 
Whereas it is desirable to promote throughout the 
Community a harmonious development of economic 
activities and a continuous and balanced expansion by 
<;ompleting an internal market which functions properly 
and offers conditions which are similar to those obtaining 
in a national market; whereas in order to create a market 
of this kind and make it increasingly a single market, not 
only must be barriers to free movement of goods and 
services be removed and arrangements be instituted 
which ensure that competition is not distorted, but, in 
addition, legal conditions must be created which enable 
undertakings to adapt their activities to the scale of the 
Community, whether in manufacturing and distributing 
goods or in providing services; whereas for those 
purposes, trade marks enabling the products and services 
of undertakings to be distinguished by identical means 
throughout the entire Community, regardless of frontiers, 
should feature amongst the legal instruments. which 
undertakings have at their disposal; 
Whereas action by the Community would appear to be 
necessary for the purpose of attaining the Community's 
(1) 01 No C 351, 31. 12. 1980, p. 1 and OJ No C 230, 31. 8. 
1984, p. 1. -
(2) 01 No C 307, 14. 11. 1983, p. 46 and 01 No C 28P, 
28. 10. 1991, p. 153. 
(3) 01 No C 310, 30. 11. 1981, p. 22. said objectives; whereas such action involves the creation 
of Community arrangements for trade marks whereby 
undertakings can by means of one procedural system 
obtain Community trade marks to which uniform 
. protection is given and which produce their effects 
throughout the entire area of the Community; whereas 
the principle of the unitary character of the Community 
trade mark thus stated will apply unless otherwise 
provided for in this Regulation; 
Whereas the barrier of territoriality of the rights 
conferred on proprietors of trade marks by the laws of 
the 1tlember States cannot be removed by approximation 
of laws; whereas in .order to open up unrestricted 
economic activity in the whole of the common market for 
the benefit of undertakings, trade marks need to be 
created which are governed by a uniform Community 
law directly applicable in all Member States; 
\Vhereas since the Treaty has not provided the specific 
powers to establish such a legal instrument, Article 235 
of the Treaty should be 'applied; 
Whereas the Community law relating to trade marks. 
nevertheless does not replace the laws of the Member 
States on trade marks; whereas it would not in fact 
appear to be justified to require undertakings to apply for 
registration of their trade marks as Community trade 
marks; whereas national trade marks continue to be 
necessary for those undertakings which do not want 
protection of their trade marks at Community level; 
Whereas the rights in a Community trade mark may not 
be obtained otherwise than by registration, and 
registration is to be refused in particular if the trade mark 
is not distinctive, if it is unlawful or if it conflicts with 
earlier rights; 
Whereas the protection afforded by a Community trade 
mark, the function of which is in particular to guarantee IPINI l/EEC/T 12 
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No L 1112 Official Journal of the European Communities 14. 1. 94 
the trade mark as an indication of origin, is absolute in 
the case of identity between the mark and the sign and 
the goods or services; whereas the protection applies also 
in cases of similarity between the mark and the sign and 
the goods or services; whereas an interpretation should 
be given of the concept of similarity in relation to the 
likelihood of confusion; whereas the likelihood of 
confusion, the appreciation of which depends on 
numerous elements and, in particular, on the recognition 
of the trade mark on the market, the association which 
can be made with the used or registered sign, the degree 
of similarity between the trade mark and the sign and 
between the goods or services identified, constitutes the 
specific condition for such, protection; 
Whereas it follows from the principle of free flow of 
goods that the proprietor of a Community trade mark 
must not be entitled to prohibit its use by a third party in 
relation to goods which have been put into circulation in 
the Community, under the. trade mark, by him or with 
his consent, save where there exist legitimate reasons for 
the proprietor to oppose further commercialization of the 
goods; . 
Whereas there is no justification for protecting 
Community trade marks or, as again~t them, any trade 
mark which has been registered before them, except 
where the trade marks are actually used; 
Whereas a Community trade mark is to be regarded as 
an object of property which exists separately from the 
undertakings whose goods or services are designated by 
it; whereas accordingly, it must be capable of being 
transferred, subject to the overriding need to prevent the 
public being misled as a result of the transfer. It must 
also be capable of being charged as security in favour of 
a third party and of being the subject matter of 
licences; 
Whereas' administrative measures are necessary at 
Community level for implementing in relation to every 
trade mark the trade mark law created by this 
Regulation; whereas it is therefore essential, while 
retaining the Community's existing institutional structure 
and balance of powers, to establish an Office for 
Harmonization in the Internal Market (trade marks and 
designs) which is independent in relation to technical 
matters and has legal, administrative and financial 
autonomy; whereas to this end it is necessary and 
appropriate that it should be a body of the Community 
having legal personality and exercising the implementing 
powers which are conferred on it by this Regulation, and 
that it should operate within the framework of 
Community law without detracting from the 
competencies exercised by the Community institutions; 
Whereas it is necessary to ensure that parties who are 
affected by decisions made by the Office are protected by 
the law in a manner which is suited to the special 
character of trade mark law; whereas to. that end 
provision is made for an appeal to lie from decisions of 
the examiners and of the various divisions of the Office; whereas if the department whose decision is contested 
does not rectify its decision it is to remit the appeal to a 
Board of Appeal of the Office, which is to decide on it; 
whereas decisions of the Boards of Appeal are, in turn, 
amenable to actions before the Court of Justice of the 
European Communities, which has jurisdiction to annul 
or to alter the contested decision; 
Whereas under Council Decision 88/5911ECSC, EEC, 
Euratom of 24 October 1988 establishing a Court of 
First Instance of the European Communities (1), as 
amended by Decision 931350/Euratom, ECSC, EEC of 
8 June 1993 (2), that Court shall exercise at the first 
instance the jurisdiction conferred on the Court of Justice 
by the Treaties establishing the Communities -with 
particular regard to appeals lodged under the second 
subparagraph of Article 173 of the EC Treaty -and by 
the acts adopted in implementation thereof, save as 
otherwise provided in an act setting up a body governed 
by Community law; whereas the jurisdiction which this 
Regulation confers on the Court of Justice to cancel and 
reform decisions of the appeal courts shall accordingly be 
exercised at the first instance by the Court in accordance 
with the above Decision; 
Whereas in order to strengthen the protection of 
Community trade marks the Member States should 
designate, having regard to their own national system, as 
limited a number as possible of national courts of first 
and second instance having jurisdiction in matters of 
infringement and validity of Community trade marks; 
Whereas decisions regarding the validity and infringement 
of Community trade. marks must have effect and cover 
the entire area of the Community, as this is the only way 
of preventing inconsistent decisions on the part of the 
courts and the Office and of ensuring that the unitary 
character of Community trade marks is not undermined; 
whereas the rules contained in the Brussels Convention of 
Jurisdiction and the Enforcement of Judgments in Civil 
and Commercial Matters will apply to all actions at law 
relating to Community trade marks, save where this 
Regulation derogates from those rules;, 
Whereas contradictory judgments should be avoided in 
actions which involve the same acts and the same parties 
and which are brought on the basis of a Community 
trade mark and parallel national trade marks; whereas 
for this purpose, when the actions are brought in the 
same Member State, the way in which this is to be 
achieved is a matter for national procedural rules, which 
are not prejudiced by this Regulation, whilst when the 
actions are brought in different Member States, 
provisions modelled on the rules on lis pendens and 
(1) OJ No L 319, 25.11. 1988, p. 1 and corrigendum in OJ No 
L 241, 17. 8. 1989, p. 4. 
(2) OJ No L 144, 16. 6. 1993, p. 21. JP IN 11IEEC/T 12 
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14. 1. 94 Official Journal of the" European CommunIties No L 1113 
related actions of the abovementioned Brussels 
Convention appear appropriate; 
Whereas in order to guarantee the full autonomy and 
independence of the Office, it is considered necessary to 
grant it an autonomous budget whose revenue comes 
principally from fees paid by the users of the system; 
whereas however, the Community budgetary procedure 
remains applicable as far as any subsidies chargeable to 
general budget of the European Communities are 
concerned; whereas moreover, the auditing of accounts 
should be undertaken by the Court of Auditors; Whereas implementing measures are required for the 
"Regulation's application, particularly as regards the 
adoption and amendment of fees regulations and an 
Implementing .Regulatic)n; whereas such measures should 
be adopted by the Commission, assisted by a Committee 
composed of representatives of the Member States, in 
accordance with the procedural rules laid down in 
Article 2, procedure III(b}, of Council Decisions 
87/3731EEC of 13 July 1987 laying down the procedures 
for the exercise of implementing powers conferred on the 
Commission (1), 
HAS ADOPTED THIS REGULATION: 
TITLE I 
GENERAL PROVISIONS 
Article 1 
Community trade mark 
1. A trade mark for goods or services which is registered 
in accordance with the conditions contained in this 
Regulation and in the manner herein provided IS 
hereinafter referred to as a 'Community trade mark'. 
2. A Community trade mark shall have a unitary 
character. It shall have equal effect throughout the 
Community: it shall not be registered, transferred or 
surrendered or be the subject of a decision revoking the 
rights .of the proprietor or declaring it invalid, nor shall 
its use be prohibited, save in respect of the whole 
Community. This principle shall apply unless otherwise 
provided in this Regulation. Article 2 
Office 
An Office for Harmonization in the Internal Market 
(trade marks and designs), hereinafter referred to as 'the 
Office', is hereby established. 
Article 3 
Capacity to act 
For the purpose of implementing this Regulation, 
companies or firms and other legal bodies shall be 
regarded as legal persons if, under the terms of· the law 
governing them, they have the capacity in their own 
name to have rights and. obligations of all kinds, to make 
contracts or accomplish other legal acts and to sue and 
be sued. 
TITLE II 
THE LAW RELATING TO TRADE MARKS 
SECfION 1 
DEFINITION OF A COMMUNITY TRADE 
MARK OBTAINING A COMMUNITY TRADE MARK 
Article 4 
Signs of which a Community trade mark may consist 
A Community trade mark may consist of any signs 
capable of being represented graphically~ particularly 
words, including personal names, designs, lett~rs, 
numerals, the shape of goods or of their packaging, 
provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other 
undertakings. 
Article 5 
Persons who can be proprietors of Community trade 
marks 
1. The following natural or legal pesons, including 
authorities established under public law, may be 
proprietors of Community trade marks: 
(a) nationals of the Member States; or 
(1) OJ No L 197, 18. 7. 1987, p. 33. IP/NI1 IEEC/T 12 
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No L 1114 Official Journal of the European Communities 14. 1. 94 
(b) nationals of other States which are parties to the Paris 
Convention for the protection of industrial property, 
hereinafter referred to as 'the Paris Convention'; or 
(c) nationals of States which are not parties to the Paris 
Convention who are domiciled or have their seat or 
. who have real and effective industrial or commercial 
establishments within the territory of the Community 
or of a State which is party to the Paris Convention; 
or 
(d) nationals, other than those referred to under 
subparagraph (c), of any State which is not party to 
the Paris Convention and which, according to 
published findings, accords to nationals of all the 
Member States the same protection for trade marks as 
it accords to its own nationals and, if nationals of the 
Member States are required to prove registration in 
the country of origin, recognizes the registration of 
Community trade marks as such proof. 
2. With respect to the application of paragraph 1, 
stateless persons as defined by Article 1 of the 
Convention relating to the Status of Stateless Persons 
signed at New York on 28 September 1954, and refugees 
as defined by Article 1 of the Convention relating to the 
Status of Refugees signed at Geneva on 28 July 1951 and 
modified by the Protocol relating to the Status of 
Refugees signed at New York on 31 January 1967, shall 
be regarded as nationals of the country in which they 
have their habitual residence. 
3. Persons who are nationals of a State covered by 
paragraph 1 (d) must prove that the trade mark. for 
which an application for a Community trade mark has 
been submitted is registered in the State of origin, unless, 
according to published findings, the trade marks of 
nationals of the Member States are registered in the State 
of origin in question without proof of prior registration 
as a Community trade mark or as a national trade mark 
in a Member State. 
Article 6 
Means whereby a Communi~ trade mark is obtained 
A Community trade mark shall be obtained by 
registration. 
Article 7 
Absolute grounds for refusal 
1. The following shall not be registered: 
(a) signs· which do not conform to the requirements of 
Article 4; 
(b) trade marks which are devoid of any distinctive 
character; 
(c) trade marks which consist·, exclusively of. signs or 
indications which may serve, in trade, to designate the 
kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the 
goods or of rendering of the service, or other 
characteristics of the goods or service; 
(d) trade marks which consist exclusively of signs or 
indications which have become customary in the 
current language or in the bona fide and established 
practices of the trade; 
(e) signs which consist exclusively of: 
(i) the shape which results from the nature of the 
goods themselves; or 
(ii) the shape of goods which is necessary to obtain a 
technical result; or 
(iii) the shape which gives substantial value to the 
goods; 
(f) trade marks which are contrary to public policy or to 
accepted principles of morality; 
(g) trade marks which are of such a nature as to deceive 
the public, for instance as to the nature, quality or 
geographical origin of the goods or .service; 
(h) trade marks which have not been authorized by the 
competent authorities and are to be refused pursuant 
to Article 6ter of the Paris Convention; 
(i) trade marks which include badges, emblems or 
. escutcheons other than those covered by Article 6ter 
of the Paris Convention and which are of particular 
public interest, unless the consent of the appropriate 
authorities to their registration has been given. 
2. Paragraph 1 shall apply notwithstanding that the 
grounds of non-registrability obtain in only part of the 
Community. 
3. Paragraph 1 (b), (c) and (d) shall not apply if the 
trade mark has become distinctive in relation to the 
goods or services for which registration. is requested in 
consequence of the use which has been made of it. 
Article 8 
Relative grounds for refusal 
1. Upon opposition by the proprietor of an earlier trade 
mark, the trade mark applied for shall not be 
registered: 
(a) if it is identical with the earlier trade mark and the 
goods or services for which registration is applied for 
are identical with the goods or services for which the 
earlier trade mark is protected; 
(b) if because of its identity with or similarity to the 
earlier trade mark and the identity or similarity of the 
goods or services covered by the trade marks there 
exists a likelihood of confusion on the part of the 
public in the territory in which the earlier trade mark 
is protected; the likelihood of confusion includes the 
likelihood of association with the earlier trade mark. IP/N/lIEEC/T 12 
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14. 1. 94 Official Journal of the European Communities No L 1115 
2. for the purposes of paragraph 1, 'Earlier trade marks' 
means: 
(a) trade marks of the following kinds with a date of 
application for registration ,vhich is earlier than the 
date of application for registration of the Community 
trade mark, taking account, where appropriate, of the 
priorities claimed in respect of those trade marks: 
(i) Community trade marks; 
(ii) trade marks registered in a Member State, or, in 
the case of Belgium, the Netherlands or 
Luxembourg, at the Benelux Trade Mark 
Office; 
(iii) trade marks registered under international 
arrangements which have effect in a Member 
State; 
(b) applications for the trade marks referred to in 
subparagraph (a), subject to their registration; 
(c) trade marks which, on the date of application for 
registration of the Community trade mark, or, ,vhere 
appropriate, of the priority claimed in respect of the 
application for registration of the Community trade 
mark, are well known in a Member State, in the sense 
in which the words 'well known' are used in Article 6 
bis of the Paris Convention. 
3. Upon opposition by the prorietor of the trade mark, a 
trade mark shall not be registered where an agent or 
representative of the proprietor of the trade mark applies 
for registration thereof in his own name without the 
proprietor's consent, unless the agent or representative 
justifies his action. 
4. Upon opposition by the proprietor of a non-registered 
trade mark or of another sign used in the course of trade 
of more than mere local significance, the trade mark 
applied for shall not be registered where and to the 
extent that, pursuant to the law of the Member State 
governing that sign, 
(a) rights to that sign were acquired prior to the date of 
application for registration of the Community trade 
mark, or the date of the priority claimed for the 
application for registration of the Community trade 
mark; 
(b) that sign confers on its proprietor the right to 
prohibit the use of a subsequent trade mark. 
5. Furthermore, upon opposition by the proprietor of an 
earlier trade mark within the meaning of paragraph 2, 
the trade mark applied for shall not be registered where it 
is identical with or similar to the earlier trade mark and 
is to be registered for goods or services which are not 
similar to those for which the earlier trade mark is 
registered, where in the case of an earlier Community 
trade mark the trade mark has a reputation in the 
Community and, in the case of an earlier national trade 
mark, the trade mark has a reputation in the Member 
State concerned and where the use without due cause of 
the trade mark applied for would take unfair advantage 
of, or be detrimental to, the distinctive character or the 
repute of the earlier trade mark. SECTION 2 
EFFECTS OF COMMUNITY TRADE MARKS 
Article 9 
Rights conferred by a Community trade mark 
1. A Community trade mark shall confer on the 
proprietor exclusive rights therein. The proprietor shall 
be entitled to prevent all third parties not having his 
consent from using in the course of trade: 
(a) any sign which is identical with the Community trade 
mark in relation to goods or services which are 
identical with those for which the Community trade 
mark is registered; 
(b) any sign where, because of its identity with or 
similarity to the Community trade mark and the 
identity or similarity of the goods or services covered 
by the Community trade mark and the sign, there 
exists a likelihood of confusion on the part of the 
public; the likelihood of confusion includes the 
likelihood of association between the sign and the 
trade mark; 
(c) any sign which is identical with or similar to the 
Community trade mark in relation to goods or 
services which are not similar to those for which the 
Community trade mark is registered, where the latter 
has· a reputation in the Community and where use of 
that sign without due cause takes unfair advantage of, 
or is detrimental to, the distinctive character or the 
repute of the Community trade mark. 
2. The following, inter alia, may be prohibited under 
paragraph 1: 
. (a) affixing the sign to the goods or to the packaging 
thereof; 
(b) offering the goods, putting them on the market or 
stocking them for these purposes under that sign, or 
offering or supplying services thereunder; 
(c) importing or exporting the goods under that .sign; 
(d) using the sign on business papers and in advertising. 
3. The rights conferred by a Community trade mark 
shall prevail against third parties from the date of 
publication of registration of the trade mark. Reasonable 
compensation may, however, be claimed in respect of 
matters arising after the date of publication of a 
Community trade mark application, which matters 
would, after publication of the registration of the trade 
mark, be prohibited by virtue of that publication. The 
court seized of the case may not decide upon the merits 
of the case until the registration has been published. 
Article 10 
Reproduction of Community trade marks in dictionaries 
If the reproduction of a Community trade mark in a 
dictionary, encyclopaedia· or similar reference work gives IP/N/lIEEC/T/2 
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No L 11/6 Official Journal of the European Communities 14. 1. 94 
the impression that it constitutes the generic name of the 
goods or services for which the trade mark is registered, 
the publisher of the work shall, at the request of the 
proprietor of the Community trade mark,· ensure that the 
reproduction of the trade mark at the latest in the next 
edition of the publication is accompanied by an 
indication that it is a registered trade mark. 
Article 11 
Prohibition on the use of a Community trade mark 
registered in the name of an agent or representative 
Where a Community trade mark is registered in the name 
of the agent or representative of a person who is the 
proprietor of that trade mark,. without the proprietor's 
authorization, the latter shall" be entitled to oppose the 
use of his mark by his agent or representative if he has 
not authorized such use, unless the agent or represen­
tative justifies his action. 
Article 12 
Limitation of the effects of a Community trade mark 
A Community trade mark shall not entitle the proprietor­
to prohibit a third party from using in the course of 
trade: 
(a) his own name or address; 
(b) indications concerning the kind, quality, quantity, 
intended purpose, value, geographical origin,· the time 
of production of the goods or of rendering of the 
service, or other characteristics of the goods or 
service; 
(c) the trade mark where it is necessary to indicate the 
intended purpose of a product or service, in particular 
as accessories or spare parts, 
provided he uses them in accordance with honest 
practices in industrial or commercial matters. 
Article 13 
Exhaustion of the rights conferred by a Community trade 
mark 
1. A Community trade mark shall not entitle the 
proprietor to prohibit its use in relation to goods which 
have been put on the market in the Community under 
that trade mark by the proprietor or with his consent. 
2. Paragraph 1 shall not apply where there exist 
legitimate reasons for the proprietor to oppose further 
commercialization of the goods, especially where the 
condition of the goods is changed or impaired after they 
have been put on the market. Article 14 
Complementary application of national law relating to 
infringement 
1. The effects of. Community trade marks shall be 
governed solely by the provisions of this Regulation. In 
other respects, infringement of a Community trade mark 
shall be governed by the national law relating to 
infringement of a national trade mark in accordance with 
the provisions of Title X. 
2. This Regulation shall not prevent actions concerning 
a Community trade mark being brought under the law of 
Member States relating in particular to civil liability and 
unfair competition. 
3. The rules of procedure to be applied shall be 
determined In accordance with the provisions of Title 
X. 
SECTION 3 
USE OF COMMUNITY TRADE MARKS 
Article 15 
Use of Community trade marks 
1. If, within a period of five years following registration, 
the proprietor has not put the Community trade mark to 
genuine use in the Community in connection with the 
goods or services in respect of which it is registered, or if 
such use has been suspended during an uninterrupted 
period of five years, the Community trade mark shall be 
subject to the sanctions provided· for in this Regulation, 
unless there are proper reasons for non-use. 
2. The following shall also constitute use within the 
meaning of paragraph 1: 
(a) use of the Community trade mark in a form differing 
in elements which do not alter the distinctive 
character of the mark in the form in which it was 
registered; 
(b) affixing of the Community trade mark to goods or to 
the packaging thereof in the Community solely for 
export purposes. 
3. Use of the Community trade mark with the consent 
of the proprietor shall be deemed to constitute use by the 
proprietor. 
SECTION 4 
COMMUNITY TRADE MARKS AS OBJECTS OF 
PROPERTY 
Article 16 
Dealing with Community trade marks as national trade 
marks 
1. Unless Articles 17 to 24 provide otherwise, a 
Community trade mark as an object of property shall be IP/N/I/EEC/T 12 
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14. 1. 94 Official Journal of the European Communities No L 1117 
dealt with in its entirety, and for the whole area of the 
Community, as a national trade mark registered in the 
Member State in which, according to the Register of 
Community trade marks, 
(a) the proprietor has his seat or his domicile on the 
relevant date; or 
(b) where subparagraph (a) does not apply, the 
proprietor has an establishment on the relevant date. 
2. In cases which are not provided for by ·paragraph 1, 
the Member State referred to in that paragraph shall be 
the Member State in which the seat of the Office is 
situated. 
3. If two or more persons are mentioned in the Register 
of Community trade marks as Jomt proprietors, 
paragraph 1 shall apply to the joint proprietor first 
mentioned; failing this, it shall apply to the subsequent 
joint proprietors in the order in which they are 
mentioned. Where paragraph 1 does not apply to any of 
the joint proprietors, paragraph 2 shall apply. 
Article 17 
Transfer 
1. A Community trade mark may be transferred, 
separately from any transfer of the undertaking, in 
respect of some or all of the goods or services for which 
it is registered. 
2. A transfer of the whole of the undertaking shall 
include the transfer of the Community trade mark except 
where, in accordance with the law governing the transfer, 
there is agreement to the contrary or circumstances 
clearly dictate otherwise. This provision shall apply to the 
contractual obligation to transfer the undertaking. 
~ 3. Without prejudice to paragraph 2, an assignment of 
the Community trade mark shall be made in writing and 
shall require the signature of the parties to the contract, 
except when it is a result of a judgment; otherwise it shall 
be void. 
4. Where it is clear from the transfer documents that 
because of the transfer the Community trade mark is 
likely to mislead the public concerning the nature, quality 
or geogaphical origin of the goods or services in respect 
of which it is registered, the Office shall not register the 
transfer unless the successor agrees to limit registration of 
the Community. trade mark to goods or services in 
respect of which it is not likely to mislead. 
5. On request of one of the parties a transfer shall be 
entered in the Register and published. 
6. As long as the transfer has not been entered in the 
Register, the successor in title may not invoke the rig~ts 
arising from the registration of the Community trade 
mark. 7. Where there are time limits to be observed vis-a-vis 
the Office, the successor in title may make the 
corresponding statements to the Office once the request 
for registration of the transfert has been received by the 
Office. 
8. All documents which require notification to the 
proprietor of the Community trade mark in accordance 
with Article 77 shall be addressed to the person 
registered as proprietor. 
Article 18 
Transfer of a trade mark registered In the name of an 
agent 
Where a Community trade mark is registered in the name 
of the agent or representative of a person who is the 
proprietor of that trade mark, without the proprietor's 
authorization, the latter shall be entitled to demand the 
assignment in his favour of the said registration, unless 
such agent or representative justifies his action. 
Article 19 
Rights in rem 
1. A Community trade mark may, independently of the 
undertaking, be given as security or be the subject of 
rights in rem. 
2. On request of one of the parties, rights mentioned in 
paragraph 1 shall be entered in the Register and 
published. . 
Article 20 
Levy of execution 
1. A Community trade mark may be levied In 
execution. 
2. As regards the procedure for levy of execution in 
respect of a Community trade mark, the courts and 
authorities of the Member States determined In 
accordance with Article 16 shall have exclusive 
jurisdiction. 
3. On request of one the parties, levy of execution shall 
be entered in the Register and published. 
Article 21 
Bankruptcy or like proceedings 
1. Until such time as common rules for the Member 
States in this field enter into force, the only Member State 
in which a Community trade mark may be involved in 
bankruptcy or like proceedings shall be that in which 
such proceedings are first· brought within the meaning of 
national law or of conventions applicable in this field. IP/NIl/EEC/T 12 
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No L 11/8 Official Journal of the European Communities 14. 1. 94 
2. Where a Community trade mark is involved in 
bankruptcy or like proceedings, on request of the 
competent national authority an entry to this effect shall 
be made in the Register and published. 
Article 22 
Licensing 
1. A Community trade mark may be licensed for some 
or all of the goods or services for which it is registered 
and for the whole or part of the Community. A licence 
may be exclusive or non-exclusive. 
2. The proprietor of a Community trade mark may 
invoke the rights conferred by that trade mark against a 
licensee who contravenes any provision in his licensing 
contract with regard to its duration, the form covered by 
the registration in which the trade mark may be used, the 
scope of the goods or services for which the licence is 
granted, the territory in which the trade mark may be 
affixed, or the quality of the goods manufactured or· of 
the services provided by the licensee. 
3. Without prejudice to the provisions of the licensing 
contract, the licensee may bring proceedings for 
infringement of a Community trade mark only if its 
proprietor consents thereto. However, the holder of an 
exclusive licence may bring such proceedings if the 
proprietor of the trade mark, after formal notice, does 
not himself bring infringement proceedings within an 
appropriate period. 
4. A licensee shall, for the purpose of obtaining 
compensation for damage suffered by him, be entitled to 
intervene in infringement proceedings brought by the 
proprietor of the Community trade mark. 5. On request of one of the parties the grant or transfer 
of a licence in respect of a Community trade mark shall 
be entered in the Register and published. 
Article 23 
Effects vis-a-vis third parties 
1. Legal acts referred to in Article 17, 19 and 22 
concerning a Community trade mark shall only have 
effects vis-a-vis third parties in all the Member States 
after entry in the Register. Nevertheless, such an act, 
before it is so entered, shall have effect vis-a-vis third 
parties who have acquired rights in the trade mark after 
the date of that act but who knew of the act at the date 
on which the rights were acquired. 
2. Paragraph 1 shall not apply in the case of a person 
who acquires the Community trade mark or a right 
concerning the Community trade mark by way of 
transfer of the whole of the undertaking or by any other 
universal succession. 
3. The effects vis-a-vis third parties of the legal acts 
referred to in Article 20 shall be governed by the law 
of the Member State determined in accordance with 
Article 16. 
4. Until such time as common rules for the Member 
States in the field of bankruptcy enter into force, the 
effects vis-a-vis third parties of bankruptcy or like 
proceedings shall be governed by the law of the Member 
State in which such proceedings are first brought within 
the meaning of national law or of conventions applicable 
in this field. 
Article 24 
The application for a Community trade mark as an 
object of property 
Articles 16 to 23 shall apply to applications for 
Community trade marks. 
TITLE III 
APPLICATION FOR COMMUNITY TRADE MARKS 
SECTION 1 
FILING OF APPLICATIONS AND THE CONDITIONS 
WHICH GOVERN THEM 
Article 25 
Fiiing of applications 
1. An application for a Community trade mark shall be 
filed, at the choice of the appl.icant, (a) at the Office; or 
(b) at the central industrial property office of a Member 
State or at the Benelux Trade Mark Office. An 
application filed in this way shall have the same effect 
as if it had been filed on the same date at the 
Office. 
2. Where the application is filed at the central industrial 
property office of a Member Stare or at the Benelux 
Trade Mark Office, that office shall take all steps to IP/NI1 IEEC/T 12 
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forward the application to the Office within two weeks 
after filing. It may charge the applicant a fee which shall 
not exceed the administrative· costs of receiving and 
forwarding the application. , 
3. Applications referred to in paragraph 2 which reach 
the Office more than one month after filing shall be 
deemed withdrawn. 
4. Ten years after the entry into force of this Regulation, 
the Commission shall draw up a report on the operation 
of the system of filing applications for Community trade 
marks, together with any proposals for modifying this 
system. 
Article 26 
Conditions with which applications must comply 
1. An application for a Community trade mark shall 
contain: 
(a) a request for the registration of a Community trade 
mark; 
(b) information identifying the applicant; 
(c) a list of the goods or services in respect of which the 
registration is requested; 
(d) a representation of the trade mark. 
2. The application for a Community trade mark shall be 
subject to the payment of the application fee and, when 
appropriate, of one or more. class fees. 
3 .. An application for a Community trade mark must 
comply with the conditions laid down in the 
implementing Regulation referred to in Article 140. 
Article 27 
Date of filing 
The date of filing of a Community trade mark 
application shall be the date on which documents 
containing the information specified in Article 26 (1) are 
filed with the Office by the applicant or, if the 
application has been filed with the central office of a 
Member State or with the Benelux Trade Mark Office, 
with that office, subject to payment of the application fee 
within a period of one month of filing the 
abovementioned documents. 
Article 28 
Classification 
Goods and services in respect of which Community trade 
marks are applied for shall be classified in conforf!lity 
with the system of classification specified in the 
Implementing Regulation. SECTION 2 
PRIORITY 
Article 29 
Right of priority 
1. A person who has duly filed an application for a 
trade mark in or for any State party to the Paris 
Convention, or his successors in title, shall enjoy, for the 
purpose of filing a Community trade mark application 
for the same trade mark in respect of goods or services 
which are identical with or contained within those for 
which the application has been filed, a right of priority 
during a period of six months from the date of filing of 
the first application. 
2. Every filing that is equivalent to a. regular national 
filing under the national law of the State where it was 
made or under bilateral or multilateral agreements shall 
be recognized as giving rise to a right of priority. 
3. By a regular national filing is meant any filing that is 
sufficient to establish the date on which the application 
was filed, whatever may be the outcome of the 
application. 
4. A subsequent application for a trade mark which was 
the subject of a previous first application in respect of the 
same goods or services, and which is filed in or in respect 
of the same State shall be considered as the first 
application for the purposes of determining priority, 
provided that, at the date of filing of the subsequent· 
application, the previous application has been withdrawn, 
abandoned or refused, without being open to public 
inspection and without leaving any rights outstanding, 
and has not served as a basis for claiming a right of 
priority. The previous application may not thereafter 
serve as a basis for claiming a right of priority. 
5. If the first filing has been made in a State which is 
not a party to the Paris Convention, paragraphs 1 to 4 
shall apply only in so far as that State, according to 
published findings, grants, on the basis of a first filing 
made at the Office and subject to conditions equivalent 
to those laid down in this Regulation, a right of priority 
having equivalent effect. 
Article 30 
Claiming priority 
An applicant desiring to take advantage of the priority of 
a previous application shall file a declaration of priority 
and a copy of the previous application. If the language of 
the latter is not one of the languages of the Office, the 
applicant shall file a translation of the previous 
application in one of those languages. . IP/N/lIEEC/T/2 
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No L 11110 Official Journalof the European Communities 14. 1. 94 
Article 31 
Effect of priority right 
The right of priority shall have the effect that the date of 
priority shall count as the date of filing of the 
Community trade mark application for the purposes of 
establishing which rights take precedence. 
Article 32 
Equivalence of Community filing with national filing 
A Community trade mark application which has been 
accorded a date of filing shall, in the Member States, be 
equivalent to a regular national filing, where appropriate 
with the priority claimed for the Community trade mark 
application. 
SECTION 3 
EXHIBmON PRIORITY 
Article 33 
Exhibition priority 
1. If an applicant for a Community trade mark has 
displayed goods or services under the mark applied for, 
at an official or· officially recognized international 
"exhibition falling within the terms of the Convention on 
InterJi1ational Exhibitions signed at Paris on 22 November 
1928 and last revised on 30 November 1972, he may, if 
he files the application within a period of six months 
from the date of the first display of the goods or services 
under the mark applied for, claim a right of priority from 
that date within the meaning of Article 31. 
2. An applicant who wishes to claim priority pursuant 
to paragraph 1 must file evidence" of the display of goods 
or services under the mark applied for under the 
conditions laid down in the Implementing Regulation. 
3. An exhibition priority granted in a Member State or 
in a third country does not extend the period of priority 
laid down in Article 29. SECTION 4 
CLAIMING THE SENIORITY OF A NATIONAL TRADE 
MARK 
Article 34 
Claiming the seniority of a national trade mark 
1. The proprietor of an earlier trade mark registered in a 
Member State, including a trade mark registered in the 
Benelux countries, or registered under international 
arrangements having effect in a Member State, who 
applies for an identical trade mark for registration as a 
Community trade mark for goods or services which are 
identical with or contained within those for which the 
earlier trade mark has been registered, may claim for the 
Community trade mark the seniority of the earlier trade 
mark in respect of the Member State in or for which it is 
registered. 
2. Seniority shall have the sole effect under this 
Regulation that, where the proprietor of the Community 
trade mark surrenders the earlier trade mark or allows it 
to lapse, he shall be deemed to continue to have the same 
rights as he would have had if the earlier trade mark had 
continued to be registered. 
3. The seniority claimed for the Community trade mark 
shall lapse if the earlier trade mark the seniority of which 
is claimed is declared to have been revoked or to be 
invalid or if it is sur"rendered prior to the registration of 
the Community trade mark. 
Article 35 
Claiming seniority after registration of the Community 
trade mark 
1. The proprietor of a Community trade mark who is 
the proprietor of an earlier identical trade mark 
registered in a Member State, including a trade mark 
registered in the Benelux countries, or of a trade mark 
registered under international arrangements having effect 
in a Member State, for identical goods or services, may 
"claim the seniority of the earlier trade mark in respect of 
the Member State in or for which it is registered. 
2. Article 34 (2) and (3) shall apply. IP IN 11IEEC/T 12 
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14. 1. 94 Official Journal of the European Communities No L 11/11 
TITLE IV 
REGISTRATION PROCEDURE 
SECTION 1 
EXAMINATION OF APPLICATIONS 
Article 36 
Examination of the conditions of filing 
1. The Office shall examine whether: 
(a) the Community trade mark application satisfies the 
requirements for the accordance of a date of filing in 
accordance with Article 27; 
(b) the Community trade mark application complies with 
the conditions laid down in the Implementing 
Regulation; 
(c) \vhere appropriate, the class fees have been paid 
within the prescribed period. 
2. \\There the Community trade mark application does 
not satisfy the requirements referred to in paragraph 1, 
the Office shall request the applicant to remedy the 
deficiencies or the default on payment within the 
prescribed period. 
3. If the deficiencies or the default on payment 
established pursuant to paragraph 1 (a) are not remedied 
within this period, the application shall not be dealt with 
as a Community trade mark application. If the applicant 
complies with the Office's request, the Office shall accord 
as the date of filing of the application the date on which 
the deficiencies or the default on payment established are 
remedied. 
4. If the deficiencies established pursuant to paragraph 1 
(b) are not remedied within the prescribed period, the 
Office shall refuse the application. 
5. If the default on payment established pursuant to 
paragraph 1 (c) is not remedied within the prescribed 
period, the application shall be deemed to be withdrawn 
unless it is clear which categories of goods or services the 
amount paid is intended to cover. 
6. Failure to satisfy the requirements concerning the 
Claim to priority shall result in loss of the right of priority 
for the application. 
7. Failure to satisfy the requirements concerning the 
claiming of seniority of a national trade mark shall result 
in loss of that right for the application. Article 37 
Examination of the conditions relating to the entitlement 
of the proprietor 
1. Where, pursuant to Article 5, the applicant may not 
be the proprietor of a Community trade mark, the 
application shall be refused. 
2. The application may not be refused before the 
applicant has been given the opportunity to withdraw his' 
application or submit his observations. 
Article 38 
Examination as to absolute grounds for refusal 
1. Where, under Article 7, a trade mark is ineligible for 
registration in respect of some or all of the goods or 
services covered by the Community trade mark 
application, the application shall be refused as regards 
those goods or services. 
2. Where the trade mark contains an element which is 
not distinctive, and where the inclusion of said element in 
the trade mark could give rise to doubts as to the scope 
of protection of the trade mark, the Office may request, 
as a condition for registration of said trade mark, that 
the applicant state that he disclaims any exclusive right to 
such element. Any disclaimer shall be published together 
with the application or the registration of the Community 
trade mark, as the case may be. 
3. The application shall not be refused before the 
applicant has been allowed the opportunity of 
withdrawing or amending the application or of 
submitting his observations. 
SECTION 2 
SEARCH 
Article 39 
Search 
1. Once the Office has accorded a date of filing to a 
Community trade mark application and has established 
that the applicant satisfies the conditions referred to in 
Article 5, it shall draw up a Community search report 
citing those earlier Community· trade marks or 
Community trade mark applications discovered which 
may be invoked under Article 8 against the registration of 
the Community trade mark applied for. IP/N/I/EEC/T/2 
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No L 11112 OffiCial Journal of the European Communities 14. 1. 94 
2. As soon as a Community trade mark application has 
been accorded a date of filing, the Office shall transmit a 
. copy thereof to the central industrial property office of 
each Member State which has informed the Office of its 
decision to operate a search in its own register of trade 
marks in respect of Community trade mark 
applications. 
3. Each of the central industrial property offices referred 
to in paragraph 2 shall communicate to the Office within 
three months as from the date on which it received the 
Community trade mark application a search report which 
shall either cite those earlier national trade marks or 
trade mark applications discovered which may be 
invoked under Article 8 against the registration of the 
Community.trade mark applied for, or state that the 
search has revealed no such rights. 
4. An amount shall be paid by the Office" to each central 
industrial property office for each search report provided 
by that office in accordance with paragraph 3. The 
amount, which shall be the same for each office, shall be 
fixed by the Budget Committee by means of a decision 
adopted by a majority of three-quarters of the 
representatives of the Member States. 
5. The Office shall transmit without delay to the 
applicant for the Community trade mark the Community 
search report and the national search reports received 
within the time limit laid down in paragraph 3. 
6. Upo~ publication of the Community trade mark 
application, which may not take place before the' expiry 
of a period of one month as from the date on which the 
Office transmits the search reports to the applicant, the 
Office shall inform the proprietors of any earlier 
Community trade marks or Community trade mark 
applications cited in the Community search report of the 
publication of the Community trade mark application. 
7. The Commission shall, five years after the opening of 
the Office for the filing of applications, submit to the 
Council a report on the operation of the system of 
searching resulting from this Article, including the 
payments made to Member States under paragraph 4, 
and, if necessary, appropriate proposals for amending 
this Regulation with a view to adapting the system of 
searching on the basis of the experience gained and 
bearing in mind developments in searching techniques. 
SECTION 3 
PUBLICATION OF THE APPLICATION 
Article 40 
Publication of the application 
1. If the conditions which the application for a 
Community trade mark must satisfy have been fulfilled and if the period referred to in Article 39 (6) has expired, 
the application shall be published to the extent that it has 
not been refused pursuant to Articles 37 and 38. 
2. Where, after publication, the application is refused 
under Articles 37 and 38, the decision that it has' been 
refused shall be published upon becoming final. 
SECTION 4 
OBSERVATIONS BY THIRD PARTIES AND OPPOSITION 
Article 41 
Observations by third parties 
1. Following the publication of the Community trade 
mark application, any natural or legal person and any 
group or body repre,.$enting manufacturers, producers, 
suppliers of services, traders or consumers may submit to 
the Office written observations, explaining on which 
grounds under Article 7, in particular, the trade mark 
shall not be registered ex officio. They shall not be 
parties to the proceedings before the Office. 
2. The observations referred to in paragraph 1 shall be 
communicated to the applicant who may comment on 
them. 
Article 42 
Opposition 
1. Within a period of three months following the 
publication of a Community trade mark application, 
notice of opposition to registration of the trade mark 
may be given on the grounds that it may not be 
registered under Article 8: 
(a) by the proprietors of earlier trade marks referred to in 
Article 8 (2) as well as licensees authorized by 
the proprietors of those trade marks, in respect of 
Article 8 (1) and (5); 
(b) by the proprietors of trade marks referred to In 
Article 8 (3); 
(c) by the proprietors of earlier marks or signs referred to 
in Article 8 (4) and by persons authorized under the 
relevant national law to exercise these rights. 
2. Notice of opposition to registration of the trade mark 
may also be given, subject to the conditions laid down in 
paragraph 1, in the event of the publication of an 
amended application in accordance with the second 
sentence of Article 44 (2). 
3. Opposition must be expressed in wntmg and must 
specify the grounds on which it is made. It shall not be IP/N 11IEEC/T 12 
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14. 1. 94 Official Journal of the European Communities No L 11/13 
treated as duly entered until the opposition fee has been 
paid. Within a period fixed by the Office, the opponent 
may submit in support of his case facts, evidence and 
arguments. 
Article 43 
Examination of opposition 
1. In the examination of the opposition the Office shall 
invite the parties, as often as necessary, to file 
observations, within a period set them by the Office, on 
communications from the other parties or issued by 
itself. 
2. If the applicant so requests, the proprietor of an 
earlier Community trade mark who has given notice of 
opposition shall furnish proof that, during the period of 
five years preceding the date of publication of the 
Community trade mark application, the earlier 
Community trade mark has been put to genuine use in 
the Community in connection with the goods or services 
in respect of which it is registered and which he cites as 
justification for his opposition, or that there are proper 
reas'ons for non-use, provided the earlier Community 
trade mark has at that date been registered for not less 
than five years. In the absence of proof to this effect, the 
opposition shall be rejected.' If the earlier Community 
trade mark has been used in relation to part only of the 
goods or services for which it is registered it shall, for the 
purposes of the examin~ltion of the opposition, be 
deemed to be registered in respect only of that part of the 
goods or services. 
3. Paragraph 2 shall apply to earlier national trade 
marks referred to in Article 8 (2) (a), by substituting use 
in the Member State in which the earlier national trade 
mark is protected for use in the Community. 
4. The Office may, if it thinks fit, invite the parties to 
make a friendly settlement. 
5. If examination of the opposition reveals that the trade 
mark may not be registered in respect of some or all of 
the goods or services for which the Community trade 
mark application has been made, the application shall be 
refused in respect of those goods or services. Otherwise. 
the opposition. shall be rejected. 6. The decision refusing the application shall be 
published upon becoming final. 
SECTION 5 
WITHDRAW AL, RESTRICTION AND AMENDMENT OF 
THE APPLICA nON 
Article 44 
Withdrawal, restriction and amendment of the 
application 
1. The applicant may at any time withdraw his 
Community trade mark application or restrict the list of 
goods or services contained therein. Where the 
application has already been published, the withdrawal 
or restriction shall also be published. 
2. In other respects, a Community trade mark 
application may be amended, upon request of the 
applicant, only by correcting the name and address of the 
applicant, errors of wording or of copying, or obvious 
mistakes, provided that such correction does not 
substantially change the trade mark or extend the list of 
goods or services. Where the amendments affect the 
representation of the trade mark or the list of goods or 
services and are made after publication of the application, 
the trade mark application shall be published as 
amended. 
SECTION 6 
REGISTRA nON 
Article 45 
Registration 
Where an application meets the requirements of this 
Regulation and where no notice of opposition has been 
given within the period referred to in Article 42 (1) or 
where opposition has been rejected by a definitive 
decision, the trade mark shall be registered as a 
Community trade mark, provided that the registration fee 
has been paid within the period prescribed. If the fee is 
not paid within this period the application shall be 
deemed to be withdrawn. 
TITLE V 
DURATION, RENEWAL AND AL TERA nON OF COMMUNITY TRADE MARKS 
Article -:1-6 
Duration of registration 
Community trade marks shall be registered for a period 
of ten years from the date of filing of the application. 
Registration may be renewed in accordance with 
Article 47 for further periods of ten years. Article 47 
Renewal 
1. Registration of the Community trade mark shall be 
renewed at the request of· the -proprietor of the trade 
mark or any person expressly authorized by him, 
provided that the fees have been paid. IP IN/I/EEC/T 12 
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No L 11114 Official Journal of the European Communities 14. 1. 94 
2. The Office shall inform the proprietor of the 
Community trade mark, and any person having a 
registered right in respect of the Community trade mark, 
of the expiry of the registration in good time before the 
said expiry. Failure to give such information shall not 
involve the responsibility of the Office. 
3. The request for renewal shall be submitted within a 
period of six months ending on the last day of the month 
in which protection ends. The fees shall also be paid 
within this period. Failing this, the request may be 
submitted and the fees paid within a further period of six 
months following the day referred to in the first sentence, 
provided that an additional fee is paid within this further 
period. 
4. Where the request is submitted or the fees paid in 
respect of only some of the goods or services for which 
the Community trade mark is registered, registration shall 
be renewed for those goods or services only. 5. Renewal shall take effect from the day following the 
date on which the existing registration expires. The 
renewal shall be registered. 
Article 48 
Alteration 
1. The Community trade mark shall not be altered in 
the register during the period of registration or on 
renewal thereof. 
2. Nevertheless, \vhere the Community trade mark 
includes the name and address of the proprietor, any 
alteration thereof not substantially affecting the identity 
of the trade mark as originally registered may be 
registered at the request of the proprietor. 
3. The publi~ation of the registration of the alteration 
shall contain a representation of the Community trade 
mark as altered. Third parties whose rights may be 
affected by the alteration may challenge the registration 
thereof within a period of three months following 
publication. 
TITLE VI 
SURRENDER, REVOCATION AND INVALIDITY 
SECTION 1 
SURRENDER 
Article 49 
Surrender 
1. A Community trade mark may be surrendered in 
respect of some or all of the goods or services for which 
it is registered. 
2. The surrender shall be declared to the Office in 
writing by the proprietor of the trade mark. It shall not 
have effect until it has' been entered in the Register. 
3. Surrender shall be entered only with the agreement of 
the proprietor of a right entered in the Register. If. a 
licence has been registered, surrender shall 'only be 
entered in the Register if the proprietor of the trade mark 
proves that he has informed the licensee of hi.s intention 
to surrender; this entry shall be made on expiry of the 
period prescribed by the Implementing Regulation. SECTION 2 
GROUNDS FOR REVOCATION 
Article 50 
Grounds for revocation 
1. The rights of the proprietor of the Community trade 
mark shall be declared to be revoked on application to 
the Office or on the basis of a counterclaim in 
infringement proceedings: 
(a) if, within a continuous period of five years, the trade 
mark has not been put to genuine use in the 
Community in connection with the goods or services 
in respect of which it is registered, and there are no 
proper reasons for non-use; however, no person may 
claim that the proprietor's rights in a Community 
trade mark should be revoked where, during the 
interval between expiry of the five-year period and 
filing of the application or counterclaim, genuine use 
of the trade mark has been started or resumed; the 
commencement or resumption of use within a period 
of three months preceding the filing of the application JP IN 11 IEEC/T 12 
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14. 1. 94 Official Journal of the European Communities No L 11115 
or counterclaim which began at the earliest on expiry 
of the continuous period of five years of non-use 
shall, however, be disregarded where preparations for 
the commencement or resumption occur only after 
the proprietor becomes aware that the application or 
counterclaim may be filed; 
(b) if, in consequence of acts or inactivity of the 
proprietor, the trade mark has become the common 
name in the trade for a product or service in respect 
of which it is registered; 
(c) if, in consequence of the use made of it by the 
proprietor of the trade mark or with his consent in 
respect of the goods or services for which it is 
registered, the trade mark is liable to mislead the 
public, particularly as to the nature, quality or 
geographical origin of those goods or services; 
(d) if the proprietor of the trade mark no longer satisfies 
the conditions laid down by Article 5. 
2. Where the grounds for revocation of rights exist in 
respect of only some of the goods or services for which 
the Community trade mark is registered, the rights of the 
proprietor shall be declared to be revoked in respect of 
those goods or services only. 
SEcrIO~ 3 
GROUNDS FOR INVALIDITY 
Article 51 
Absolute grounds for invalidity 
1. A Community trade mark shall be declared invalid on 
application to the Office or on the basis of a 
counterclaim in infringement proceedings, 
(a) where the Community trade mark has been registered 
in breach of the provisions of Article 5 or of 
Article 7; 
(b) where the applicant was acting in bad faith when he 
filed the application for the trade mark. 
2. Where the Community trade mark has been registered 
in breach of the provisions of Article 7 (1) (b), (c) or (d), 
it may nevertheless not be declared invalid if, in 
consequence of the use which has been made of it, it has 
after registration acquired a distinctive character in 
relation to the goods or services for which it is 
registered. 
3. Where the ground for invalidity exists in respect of 
only some of 'the \goods or services for which the 
Community trade mark is registered, the trade mark shall 
be declared invalid as regards those goods or services 
only. 
Article 52 
Relative grounds for invalidity 
1. A Community trade mark shall be declared invalid on 
application to the Office or on the basis of a 
counterclaim in infringement proceedings: (a) where there is an earlier trade mark as referred to in _ 
Article 8 (2) and the conditions set out in para­
graph 1 or paragraph 5 of that Article are fulfilled; 
(b) where there is a trade mark as referred to in Article 8 
(3) and the conditions set out in that paragraph are 
fulfilled; 
(c) where there is an earlier right as referred to in Article 
8 (4) and the conditions set out in that paragraph are 
fulfilled. 
2. A Community trade mark shall also be declared 
invalid on application to the Office or on the basis of a 
conterclaim in infringement proceedings where the use of 
such trade mark may be prohibited pursuant to the 
national law governing the protection of any other earlier 
right an in particular: 
(a) a right to a name; 
(b) a right of personal portrayal; 
(c) a copyright; 
(d) an industrial property right. 
3. A Community trade mark may not be declared 
invalid where the proprietor of a right referred to in 
paragraphs 1 or 2 consents expressly to the registration 
of the Community trade mark before submission of the 
application for a declaration of invalidity or the 
counterclaim. 
4. Where the proprietor of one of the rights referred to 
in paragraphs 1 or 2 has previously applied for a 
declaration that a Community trade mark is invalid or 
made a counterclaim in infringement proceedings, he may 
not submit a new application for a declaration of 
invalidity or lodge a counterclaim on the basis of another 
of the said rights which he could have invoked in support 
of his first application or counterclaim. 
5. Article 51 (3) shall apply. 
Article 53 
Limitation in consequence of acquiescence 
1. Where the proprietor of a Community trade mark has 
acquiesced, for a period of five successive years, in the 
use of a later Community trade mark in the Community 
while being aware of such use, he shall no longer be 
entitled on the basis of the earlier trade mark either to 
apply for a declaration that the later trade mark is invalid 
or to oppose the use of the later trade mark in respect of 
the goods or services for which the later trade mark has 
been used, unless registration of the later Community 
trade mark was applied for in bad faith. 
2. \Vhere the proprietor of an earlier national trade 
mark as referred to in Article 8 (2) or of another earlier 
sign referred to in Article 8 (4) has acquiesced, for a 
period of five successive years, in the use of a later 
Community trade mark in the Member State in which the 
earlier' trade mark or the other earlier sign is protected 
while being aware of such use, he shall no longer be 
entitled on the basis of the earlier trade mark or of the 
other earlier sign either to apply for a declaration that the 
later trade mark is invalid or to oppose the use of the IP IN/1 IEEC/T 12 
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No L 11116 Official Journal of the European Communities 14. 1. 94 
later trade mark in respect of the goods or services for 
which the later trade mark has been used, unless 
registration of the later Community trade mark was 
applied for in bad faith. 
3. In the cases referred to in paragraphs 1 and 2, the 
proprietor of a later Community trade mark shall not be 
entitled to oppose the use of the earlier right, even 
though that right may no longer be invoked against the 
later Community trade mark. 
SECTION 4 
CONSEQUENCES OF REVOCATION AND INVALIDITY 
Article 54 
Consequences of revocation and invalidity 
1. The Community trade mark shall be deemed not to 
have had, as from the date of the application for 
revocation or of the counterclaim, the effects specified in 
this Regulation, to the extent that the rights of the 
proprietor have been revoked. An earlier date, on which 
one of the grounds for revocation occurred, may be fixed 
in the decision at the request of one of the parties. 
2. The Community trade mark shall be deemed not to 
have had, as from the outset, the effects specified in this 
Regulation, to the extent that the trade mark has been 
declared invalid. 
3. Subject to the national prOVlSlons relating either to 
claims for compensation for damage caused by negligence 
or lack of good faith on the part of the proprietor of the 
trade mark, or to unjust enrichment, the retroactive effect 
of revocation or invalidity of the trade mark shall not 
affect: 
(a) any decision on infringement which has acquired the 
authority of a final decision and been enforced prior 
to the revocation or invalidity decision; 
(b) any contract concluded prior to the revocation or 
invalidity decision, in so far as it has been performed 
before that decision; however, repayment, to an 
extent justified by the circumstances, of sums paid 
under the relevant contract, may be claimed on 
grounds of equity. 
SECTION 5 
PROCEEDINGS IN THE OFFICE IN RELATION TO 
REVOCATION OR INVALIDITY 
Article 55 
Application for revocation or for a declaration of 
invalidity 
1. An application for revocation of the rights of the 
proprietor of a Community trade mark. or for a 
declaration that the trade mark is invalid may be 
submitted to the Office: (a) where Articles 50 and 51 apply, by any natural or 
legal person and any group or body set up for the 
purpose of representing the interests of 
manufacturers, producers, suppliers of services, 
traders or consumers, which under the terms of the 
law governing it has the capacity in its own name to 
sue and be sued; 
(b) where Article 52 (1) applies, by the persons referred 
to in Article 42 (1); 
(c) where Article 52 (2) applies, by the owners of the 
earlier rights referred to in that provision or by the 
persons who are entitled under the law of the 
Member State concerned to exercise the rights in 
question. 
2. The application shall be filed in a written reasoned 
statement. It shall not be deemed to have been filed until 
the fee has been paid. 
3. An application for revocation or for a declaration of 
invalidity shall be inadmissible if an application relating 
to the same subject matter and cause of action, and 
involving the same parties, has been adjudicated on by a 
court in a Member State and has acquired the authority 
of a final decision. 
Article 56 
Examination of the application 
1. In the examination of the application for revocation 
of rights or for a declaration of invalidity, the Office shall 
invite the parties, as often as necessary, to file 
observations, within a period to be fixed by the Office, 
on communications from the other parties or issued by 
itself. 
2. If the proprietor of the Community trade mark so 
requests, the proprietor of an earlier Community trade 
mark, being a party to the invalidity proceedings, shall 
furnish proof that, during the period of five years 
preceding the date of the application for a declaration of 
invalidity, the earlier Community trade mark has been 
put to genuine use in the Community in connection with 
the goods or services in respect of which it is registered 
and which he cites as justification for his application, or 
that there are proper reasons for non-use, provided the 
earlier Community trade mark has at that date been 
registered for non-use, provided the earlier Community 
trade mark has at that date been registered for not less 
than five years. If, at the date on which the Community 
trade mark application was published, the earlier 
Community trade mark had been registered for not less 
than five years, the proprietor of the earlier Community 
trade mark shall furnish proof that, in addition, the 
conditions contained in Article 43 (2) were satisfied at 
that "dare. In the absence of proof to this effect the 
application for a declaration of invalidity shall be 
rejected. If the earlier Community trade mark has been 
used in relation to part only of the goods or services for 
which it is registered it shall, for the purpose of the 
examination of the application for a declaration of 
invalidity, be deemed to be registered in respect only of 
that parr of the goods or services. 
3. Paragraph 2 shall apply to earlier national trade 
marks referred to in Article 8 (2) (a), by substituting use IP/N/lIEEC/T 12 
Page 18 
14. 1. 94 Official Journal of the European CommunitIes No L 11117 
in the Member State in which the earlier national trade 
mark is protected for use in the Community. 
4. The Office may, if it thinks fit, invite the parties to 
make a friendly settlement. 
5. If the examination of the application for revocation 
of rights or for a declaration of invalidity reveals that the 
trade mark should not have been registered in respect of some or all of the goods or services for which it is 
registered, the rights of the proprietor of the Community 
trade mark shall be revoked or it shall be declared invalid 
in respect of those goods or services. Otherwise the 
application for revocation of rights or for a declaration 
of invalidity shall be rejected. 
6. The decision revoking the rights of the proprietor of 
the Community trade mark or declaring it invalid shall be 
entered in the Register upon becoming final. 
TITLE VII 
APPEALS 
Article 57 
Decisions subject to appeal 
1. An appeal shall lie from decisions of the examiners, 
Opposition Divisions, Administration of Trade Marks 
and Legal Devision and Cancellation Divisions. It shall 
have suspensive effect. 
2. A decision which does not terminate proceedings as 
regards one of the parties can only be appealed together 
with the final decision, unless the decision allows 
separate appeal. 
Article 58 
Persons entitled to appeal and to be parties to appeal 
proceedings 
Any party to proceedings adversely affected by a decision 
may appeal. Any other parties to the proceedings shall be 
parties to the appeal proceedings as of right. 
Article 59 
Time limit and form of appeal 
Notice of appeal must be filed in writing at the Office 
within two months after the date of notification of the 
decision appealed from. The notice shall be deemed to 
have been filed only when the fee for appeal ha~ been 
paid. Within four months after the date of notification of 
the decision, a written statement setting out the grounds 
of appeal must be filed. . 
Article 60 
Interlocutory revision 
1. If the department whose decision is contested 
considers the appeal to be admissible and well founded, it shall rectify its decision. This shall not apply where 
the appellant is opposed by another party to the 
proceedings. 
2. If the 'decision is not rectified within one" month after 
receipt of the statement of grounds, the appeal shall be 
remitted to the Board of Appeal without delay, and 
without comment as to its merit. 
Article 61 
Examination of appeals 
1. If the appeal is admissible, the Board of Appeal shall 
examine whether the appeal is allowable. 
2. In the examination of the appeal, the Board of 
Appeal shall invite the parries, as often as necessary, to 
file observations, within a period to be fixed by the 
Board of Appeal, on communications from the other 
parties or issued by itself. 
Article 62 
Decisions in respect of appeals 
1. Following the examination as to the allowability of 
the appeal, "the Board of Appeal shall decide on the 
appeal. The Board of Appeal may either exercise any 
power within the competence of the department which 
was responsible for the decision appealed or remit the 
case to that department for further prosecution. 
2. If the Board of Appeal remits the case for further 
prosecution to the department whose decision was 
appealed, that department shall be bound by the ratio 
decidendi of the Board of Appeal, in so far as the facts 
are the same. 
3. The decisions of the Boards of Appeal shall take 
effect only as from the date of expiration of the period 
referred to in Article 63 (5) or, if an action has been 
brought before the Court of Justice within that period, as 
from the date of rejection of such action. IP/N/lIEEC/T 12 
Page 19 
No L 11118 Official Journal of the European Communities 14. 1. 94 
Article 63 
Actions before the Court of Justice 
1. Actions may be brought before the Court of Justice 
against decisions of the Boards of Appeal on appeals. 
2. The action may be brought on grounds of lack of 
competence, infringement of an essential procedural 
requirement, infringement of the Treaty, of this 
Regulation or of any rule of law relating to their 
application or misuse of power. 3. The Court of Justice has jurisdiction to annul or to 
alter the contested decision. 
4. The action shall be open to any party to proceedings 
before the Board of Appeal adversely affected by its 
decision. 
5. The action shall be brought before the Court of 
Justice within two months of the date of notification of 
the decision of the Board of Appeal. 
6. The Office shall be required to take the necessary 
measures to comply with the judgment of .the Court of 
Justice. 
TITLE VIII 
COMMUNITY COLLECTIVE MARKS 
Article 64 
Community collective marks 
1. A Community collective mark shall be a Community 
trade mark which is described as such when the mark is 
applied for and is capable of distinguishing the goods or 
services of the members of the association which is the 
proprietor of the mark from those of other undertakings. 
Associations of manufacturers, producers, suppliers of 
services, or traders which, under the terms of the law 
governing them, have the capacity in their own name to 
have rights and obligations of all kinds, to make 
contracts or accomplish other legal acts and to sue and 
be sued, as well as legal persons governed by public law, 
may apply for Community collective marks. 
2. In derogation from Article 7 (1) (c), signs or 
indications which may serve, in trade, to designate the 
geographical origin of the goods or services may 
constitute Community collective marks within the 
meaning of paragraph 1. A collective mark shall not 
entitle the proprietor to prohibit a third party from using 
in the course of trade such signs or indications, provided 
he uses them in accordance with honest practices in 
industrial or commercial matters; in particular, such a 
mark may not be invoked against a third party who is 
entitled to use a geographical name. 
3. The provisions of this Regulation shall apply to 
Community collective marks, unless Articles 65 to 72 
provide otherwise. 
Article 65 
Regulations gover~ing use of the mark 
1. An applicant for a Community collective.mark must 
submit regulations governing its use within the period 
prescribed. 2. The regulations governing use shall specify the 
persons authorized to use the mark, the conditions of 
membership of the association and, where they exist, the 
conditions of use of the mark including sanctions. The 
regulations governing use of a mark referred to in Article 
64 (2) must authorize any person whose goods or 
services originate in the geographical area concerned to 
become a member of the association which is the 
proprietor of the mark. 
Article 66 
Refusal of the application 
1. In addition to the grounds for refusal of a 
Community trade mark application provided for in 
Articles 36 and 38, an application for a Community 
collective mark shall be refused where the provisions of 
Article 64 or 65 are not satisfied, or where the; 
regulations governing use are contrary to public policy or 
to accepted principles of morality. 
2. An application for a Community collective mark shall 
also be refused if the public is liable to be misled as 
regards the character or the significance of the mark, in 
particular if it is likely to be taken to be something other 
than a collective mark. 
3. An application shall not be refused if the applicant, as 
a result of amendment of the regulations governing use, 
meets the requirements of paragraphs 1 and 2. 
Article 67 
Obervations by third parties 
Apart from the cases mentioned in Article 41, any 
person, group or body referred to in that Article may 
submit to the Office written observations based on the 
particular grounds on which the application for a 
Community collective mark should be refused under the 
terms of Article 66. [PIN II/EEC/T 12 
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14. 1. 94 Official Journal of the European Communities No L 11119 
Article 68 
Use of marks 
Use of a Community collective mark by any person who 
has authority to use it shall satisfy the requirements of 
this Regulation, provided that the other conditions which 
this Regulation imposes with regard to the' use of 
Community trade marks are fulfilled. 
Article 69 
Amendment of the regulations governing use of the 
mark 
1. The proprietor of a Community collective mark must 
submit to the Office any amended regulations governing 
use. 
2. The amendment shall not be mentioned in the 
Register if the amended regulations do not satisfy the 
requirements of Article 65 or involve one of the grounds 
for refusal referred to in Article 66. 
3. Article 67 shall apply to amended regulations 
governing use. 
4. For the purposes of applying this Regulation, 
amendments to the regulations governing use shall take 
effect only from the date of entry of the mention of the 
amendment in the Register. 
Article 70 
Persons who are entitled to bring an action for 
infringement 
1. The prOVlSlons of Article 22 (3) and (4) concerning 
the rights of licensees shall apply to every person who has 
authority to use a Community collective mark. 2. The proprietor of a Community collective mark shall 
be entitled to claim compensation on behalf of persons 
who have authority to use the mark where they have 
sustained damage in consequence of unauthorized use of 
the mark. 
Article 71 
Grounds for revocation 
Apart from the grounds for revocation provided for in 
Article 50, the rights of the proprietor of a Community 
collective mark shall be revoked on application to the 
Office or on the basis of a counterclaim in infringement 
proceedings, if: . 
(a) the proprittor does not take reasonable steps to 
prevent the mark being used in a manner 
incompatible with the conditions of use, where these 
exist, laid down in the regulations governing use, 
amendments to which have, where appropriate, been 
mentioned in the Register; 
(b) the manner in which the mark has been used by the 
proprietor has caused it to become liable to mislead 
the public in the manner referred to in Article 66 
(2); 
(c) an amendment to the regulations governing use of the 
mark has been mentioned in the Register in breach of 
the provisions of Article 69 (2), unless the proprietor 
of the mark, by further amending the regulations 
governing use, complies with the requirements of 
those provisions. 
Article 72 
Grounds for invalidity 
Apart from the grounds for invalidity provided for in 
Articles 51 and 52, a Community collective mark which 
is registered in breach of the provisions of Article 66 shall 
be declared invalid on application to the Office or on the 
basis of a counterclaim in infringement proceedings, 
unless the proprietor of the mark, by amending the 
regulations governing use, complies with the requirements 
of those provisions. 
TITLE IX 
PROCEDURE 
SECTION 1 
GENERAL PROVISIONS 
Article 73 
Statement of reasons on which decisions are based 
Decisions of the Office shall state the reasons on which 
they are based. They shall be based only on reasons or 
evidence on which the parties concerned have had on 
opportunity to present their comments. Article 74 
Examination of the facts by the Office of its own 
motion 
1. In proceedings before it the Office shall examine the 
facts of its own motion; however, in proceedings relating 
to relative grounds for re'fusal of registration, the Office 
shall be restricted in this examination to the facts, 
evidence and arguments provided by the parties and the 
relief sought. 
2. The Office may disregard facts or evidence which are 
not submitted in due time by the parties concerned. IP/N/lIEEC/T 12 
Page 21 
No L 11120 Official Journal of the European Communities 14. 1. 94 
Article 75 
Oral proceedings 
1. If the Office considers that oral proceedings would be 
expedient they shall be held either at the instance of the 
Office or at the request of any party to the proceedings. 
2. Oral proceedings before the examiners, the 
Opposition Division and the Administration of Trade 
Marks and Legal Division shall not be public. 
3. Oral proceedings, including delivery of the decision, 
shall be public before the Cancellation Division and the 
Boards of Appeal, in so far as the department before 
which the proceedings are taking place does not decide 
otherwise in cases where admission of the public could 
have serious and unjustified disadvantages, in particular 
for a party to the proceedings. 
Article 76 
Taking of evidence 
1. In any proceedings before the Office, the means of 
giving or c:btaining evidence shall include the following: 
(a) hearing the parties; 
(b) requests for information; 
(c) the production of documents and items of evidence; 
(d) hearing witnesses; 
(e) opinions by experts; 
(f) statements in writing sworn or affirmed or having a 
similar effect under the law of the State in which the 
statement is drawn up. 
2. The relevant department may commission one of its 
members to examine the evidence adduced. 
3. If the Office considers it necessary for a party, 
witness or expert to give evidence orally, it shall issue a 
summons to the person concerned to appear before it. 
4. The parties shall be informed of the hearing of a 
witness or expert before the Office: They shall have the 
right to be present and to put questions to the witness or 
expert. 
Article 77 
Notification 
The Office shall, as a matter of course, notify those 
concerned of decisions and summonses and of any notice 
or other communication from which a time limit is 
reckoned, or of which those concerned must be notified 
under other provisions of this Regulation or ~f the 
Implementing Regulation, or of which notification has 
been ordered by the President of the Office. Article 78 
Restitutio in integrum 
1. The applicant for or proprietor of a Community trade 
mark or any other party to proceedings before the Office 
who, in spite of all due care required by the 
circumstances having been taken, was unable to observe a 
time limit vis-a-vis the Office shall, upon application, 
have his rights re-established if the non-observance in 
question has the direct consequence, by virtue of the 
provisions of this Regulation, of causing the loss of any 
right or means of redress. 
2. The application must be filed in writing within two 
months from the removal of the cause of non-compliance 
with the time limit. The omitted act must be completed 
within this period. The application shall only be 
admissible within the year immediately following the 
expiry of the unobserved time limit. In the case of 
non-submission of the request for renewal of registration 
or of non-payment of a renewal fee, the further period of 
six months provided in Article 47 (3), third sentence, 
shall be deducted from the period of one year. 
3. The application must state the' grounds on which it is 
based and must set out the facts on which it relies. It 
shall not be deemed to be filed until the fee for 
re-establishment of rights has been paid. 
4. The department competent to decide on the omitted 
act shall decide upon the application. 
5. The provisions of this Article shall not be applicable 
to the time limits referred to in paragraph 2 of this 
Article, Articles 29 (1) and 42 (1). 
6. Where the applicant for or proprietor of a 
Community trade mark has his rights re-established, he 
may not invoke his rights vis-a-vis a third party who, in 
good faith, has put goods on the market or supplied 
services under a sign which is identical with or similar to 
the Community trade mark in the course of the period 
between the loss of rights in the application or in the 
Community trade mark and publication of the mention 
of re-establishment of those rights. 
7. A third party who may avail himself of the provisions 
of paragraph 6 may bring third party proceedings against 
the decision re-establishing the rights of the applicant for 
or proprietor of a Community trade mark within a 
period of two months as from the date of publication of 
the mention of re-establishment of those rights. 
8. Nothing in this Article shall limit the right of a 
Member State to grant restitutio in integrum in respect of 
time limits provided for in this Regulation and to be 
observed vis-a-vis the authorities of such State. IP/NIl/EEC/T 12 
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14. 1. 94 Official Journal of the European Communities No L 11/21 
Article 79 
Reference to general principles 
In the absence of procedural provisions In this 
Regulation, the Implementing Regulation, the fees 
regulations or the rules of procedure of the Boards of 
Appeal, the Office shall take into account the principles 
of procedural law generally recognized in the Member 
States. 
Article 80 
Termination of financial obligations 
1. Rights of the Office to the payment of a fee shall be 
extinguished after four years from the end of the calendar 
year in which the fee fell due. 
2. Rights against the Office for the refunding of fees or 
sums of money paid in excess of a fee shall be 
extinguished after four years from the end of the calendar 
year in which the right arose. 
3. The period laid down in paragraphs 1 and 2 shall be 
interrupted in the case covered by paragraph 1 by a 
request for payment of the fee and in the case covered by 
paragra'ph 2 by a reasoned claim in writing. On 
interruption it shall begin again immediately and shall 
end at the latest six years after the end of the year in 
which it originally began, unless, in the meantime, 
judicial proceedings to enforce the right have begun; in 
this case the period shall end at the earliest one year after 
the judgement has acquired the authority of a final 
decision. 
SECTION 2 
COSTS 
Article 81 
Costs 
1. The losing party in opposition proceedings, 
proceedings for revocation, proceedings for a declaration 
of invalidity or appeal proceedings shall bear the fees 
incurred by the other party as well as all costs, without 
prejudice to Article 115 (6), incurred by him essential to 
the proceedings, including travel and subsistence and the 
remuneration of an agent, adviser or advocate, within the 
limits of the scales set for each category of costs under 
the conditions laid down in the Implementing 
Regulation. 
2. However, where each party succeeds on some and 
fails on other heads, or if reasons of equity so dictate, the 
Opposition Division, Cancellation Division or Board of 
Appeal shall decide a different apportionment of costs. 
3. The party who terminates the proceedings by 
withdrawing the Community trade mark application, 'the 
opposition, the application for revocation of rights, the application for a declaration of invalidity or the appeal, 
or by not renewing registration of the Community trade 
mark or by surrendering the Community trade mark, 
shall bear the fees and the costs incurred by the other 
party as stipulated in paragraphs 1 and 2. 
4. Where a case does not proceed to judgment the costs 
shall be at the discretion of the Opposition Division, 
Cancellation Division or Board of Appeal. 
5. Where the parties conclude before the Opposition 
Division, Cancellation Division or Board of Appeal a 
settlement of COStS differing from that provided for in the 
preceding paragraphs, the department concerned shall 
take note of that agreement. 
6. On request the registry of the Opposition Division or 
Cancellation Division or Board of Appeal shall fix the 
amount of the costs to be paid pursuant to the preceding 
paragraphs. The amount so determined may be reviewed 
by a decision of the Opposition Division or Cancellation 
Division or Board of Appeal on a request filed within the 
prescribed period. 
Article 82 
Enforcement of decisions fixing the amount of costs 
1. Any final decision of the Office fixing the amount of 
COSts shall be enforceable. 
2. Enforcement shall be governed by the rules of civil 
procedure in force in the State in the territory of which it 
is carried out. The order for its enforcement shall be 
appended to the decision, without other formality than 
verification of the authenticity of the decision, by the 
national authority which the Government of each 
Member State shall designate for this purpose and shall 
make known to the Office and to the Court of Justice. 
3. When these formalities have been completed on 
application by the party concerned, the latter may 
proceed to enforcement in accordance with the national 
law, by bringing the matter directly before the competent 
authority. 
4, Enforcement may be suspended only by a decision of 
the Court of Justice. However, the courts of the country 
concerned shall have jurisdiction over complaints that 
enforcement is being carried out in an irregular manner. 
SECTION 3 
INFORMATION OF THE PUBLIC AND OF THE OFFICIAL 
AUTHORITIES OF THE MEMBER STATES 
Article 83 
Register of Community trade marks 
The Office shall keep a register to the known as the 
Register of Community trade marks, which shall contain IP/N/lIEEC/T 12 
Page 23 
No L 11/22 Official Journal of the European Communities 14. 1..94 
those particulars the registration or inclusion of which is 
provided for by this Regulation or by the Implementing 
Regulation. The Register shall be open to public 
inspection. 
Article 84 
Inspection of files 
1. The files relating to Community trade mark 
applications which have not yet been published shall not 
be made available for inspection without the consent of 
the applicant. 
2. Any person who can prove that the applicant for a 
Community trade mark has stated that after the trade 
mark has been 'registered he will invoke the rights under 
it against him may obtain inspection of the files prior to 
the publication of. that application and without the 
consent of the applicant. 
3. Subsequent to the publication of the Community 
trade mark application, the files relating to such 
application and the resulting trade mark may be 
inspected on request. 
4. However, where the files are inspected pursuant to 
paragraphs 2 or 3, certain documents in the file may be 
withheld from inspection in accordance with the 
provisions of the Implementing Regulation. 
Article 85 
Periodical publications 
The Office shall periodically publish: 
(a) a Community Trade Marks Bulletin containing entries 
made in the Register of Community trade marks as 
well as other particulars the publication of which is 
prescribed by this Regulation or by the Implementing 
Regulation; . 
(b) an Official Journal contammg notices and 
information of a general character issued by the 
President of the Office, as well as any other 
information relevant· to this Regulation or its 
implementation. 
Article 86 
Administrative cooperation 
Unless' otherwise provided in this Regulation or in 
national laws, the Office and the courts or authorities of 
the Member States shall on request give assistance to 
each other by communicating information or opening 
files for inspection. Where the Office lays files open to 
inspection by courts, Public Prosecutors' Offices or 
central industrial property offices, the inspection shall not 
be subject to the restrictions laid down in Ar~icle 84. Article 87 
Exchange of publications 
1. The Office and the central industrial property offices 
of the Member States shall despatch to each other on 
request and for their own use one or more copies of their 
respective publications free of charge. 
2. The Office may conclude agreements relating to the 
exchange or supply of publications. 
SECTION 4 
REPRESENTATION 
Article 88 
General principles of representation 
1. Subject to the provisions of paragraph 2, no person 
shall be compelled to be represented before the Office. 
2. Without prejudice to paragraph 3, second sentence, 
natural or legal persons not having either ·their domicile 
or their principal place of business or a real and effective 
industrial or commercial establishment in the Community 
must be represented before the Office in accordance with 
Article 89 (1) in all proceedings established by this 
Regulation, other than in filing an application for a 
Community trade mark; the Implementing Regulation 
may permit other exceptions. 
3. Natural or legal persons having their domicile or 
principal place of business or a real and effective 
industrial or commercial establishment in the Community 
may be represented before the Office by an employee, 
who must file with it a signed authorization for insertion 
on the files, the details of which are set out in the 
Implementing Regulation. An employee of a legal person 
to which this paragraph applies may also represent other 
legal persons which have economic connections with the 
first legal person, even if those other legal persons have 
neither their domicile nor their principal place of business 
nor a real and effective industrial or commercial 
establishment within the Community. 
Article 89 
Professional representatives 
1. Representation of natural or legal persons before the 
Office may only be undertaken by; 
(a) any legal practitioner qualified in one of the Member 
States and having his place of business within the 
Community, to the extent that he is entitled, within 
the said State, to act as a representative in trade mark 
matters; or 
(b) professional representatives whose names appear on 
the list maintained for this purpose by the Office. IP/N/lIEEC/T 12 
Page 24 
14. 1. 94 Official Journal of the European Communities No L 11123 
Representatives acting before the Office must file with it 
a signed authorization for insertion on the files, the 
details of \".·hich are set out in the Implementing 
Regulation. 
2. Any natural person who fulfils the following 
conditions may be entered on the list of professional 
representatives: 
(<1) he must be a national of one of the Member States; 
(b) he must have his place of business or employment in 
[he Community; 
(c) he must be entitled to represent natural or legal 
persons in trade mark matters' before the central 
industrial property office of the Member State in 
which he has his place of business or employment. 
Where, in that State, the entitlement is not 
conditional upon the requirement of special 
professional qualifications, persons applying to be 
entered on the list who act in trade mark matters 
before the central industrial property office of the 
said State must have habitually so-acted for at least 
five years. However, persons whose professional 
qualification to represent natural or legal persons in 'trade mark matters before the central, industrial 
property office of one of the Member States is 
officially recognized in accordance with the 
regulations laid down by such State shall not be 
subject to the condition of having exercised the 
profession. 
3. Entry shall be effected upon request, accompanied by 
a certificate furnished by the central industrial property 
office of the Member State concerned, which must 
indicate that the conditions laid down in paragraph 2 are 
fulfilled. 
4. The President of the Office may grant exemption 
from: 
(a) the requirement of paragraph 2 (c), second sentence, 
if the applicant furnishes proof that he has acquired 
the requisite qualification in another way; 
(b) the requirement of paragraph 2 (a) in special 
circumstances. 
5. The conditions under which a person may, be 
removed from the list of professional representatives shall 
be laid down in the Implementing Regulation. 
TITLE X 
JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING TO COMMUNITY 
TRADE MARKS 
SECTION 1 
APPLICATION OF THE CONVENTION ON JURISDICTION 
AND ENFORCEMENT 
Article 90 
Application of the Convention on Jurisdiction and 
Enforcement 
1. Unless otherwise specified in this Regulation, the 
Convention on Jurisdiction and the Enforcement of 
Judgments in Civil and Commercial Matters, signed in 
Brussels on '27 September 1968, as amended by the 
Conventions on the Accession to that Convention of the 
States acceding to the European Communities, the whole 
of which Convention and of which Conventions of 
Accession are hereinafter referred to as th~ 'Convention 
on Jurisdiction and Enforcement', shall apply to 
proceedings relating to Community trade marks and 
applications for Community trade marks, as well as to 
proceedings relating to simultaneous and successive 
actions on the basis of Community trade marks and 
national trade marks. 
2. In the case of proceedings in respect of the actions 
and claims referred to in Article 92: (a) Articles 2, 4, 5 (1), (3), (4) and (5) and Article 24 of 
the Convention on Jurisdiction and Enforcement shall 
not apply; 
(b) Articles 17 and 18 of that Convention shall apply 
subject to the limitations in Article 93 (4) of this 
Regulation; 
(c) the provisions of Title II of that Convention which 
are applicable to persons domiciled ina Member 
State shall also be applicable to persons who do not 
have a domicile in any !vlember State but have' an 
establishment therein. 
SECTION 2 
DISPUTES CONCERNING THE INFRINGEMENT AND 
VALIDITY OF COMMUNITY TRADE MARKS 
Article 91 
Community trade mark courts 
1. The Member States shall designate in their territories 
as limited a number as possible of national courts and 
tribunals of first and second instance, hereinafter referred 
to as 'Community trade mark courts', which -shall 
perform the functions assigned to th~m by this 
Regulation. IP 1Nl 1 IEEC/T 12 
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No L 11124 Official Journal of the European Communities 14. 1. 94 
2. Each Member State shall communicate to _0 the 
Commission within three years of the entry into force of 
this Regulation a list of Community trade mark courts 
indicating their names and their territorial jurisdiction. 
3. Any change made after communication of the list 
referred to in paragraph 2 in the number, names or 
territorial jurisdiction of the courts shall be notified 
without delay by the Member State concerned to the 
Commission. 
4. The information referred to in paragraphs 2 and 3 
shall be notified by the Commission to the Member 
States and published in the Official Journal of the 
European Communities. 
5. As long as a Member State has not communicated the 
list as stipulated in paragraph 2, jurisdiction for any 
proceedings resulting from an action or application 
covered by Article 92, and for which the courts of that 
State have jurisdiction under Article 93, shall lie with that 
court of the State in question which would. have 
jurisdiction ratione loci and ratione materiae in the case 
of proceedings relating to a national trade mark 
registered in that State. 
Article 92 
Jurisdiction over infringement and validity 
The Community trade mark courts shall have exclusive 
jurisdiction: 
(a) for all infringement actions and -if they are 
permitted under national law -actions in respect of 
threatened infringement relating to Community trade 
marks; 
(b) for actions for declaration of non-infringement, if 
they are permitted under national law; 
(c) for all actions brought as a result of acts referred to 
in Article 9 (3), second sentence; 
(d) for counterclaims for revocation or for a declaration 
of invalidity of the Community trade mark pursuant 
to Article 96. 
Article 93 
International jurisdiction 
1. SUQject to the provisions of this Regulation as well as 
to any provisions of the Convention on Jurisdiction and 
Enforcement applicable by virtue of Article 90, 
proceedings in respect of the actions and claims referred 
to in Article 92 shall be brought in the courts of the 
Member State in which the defendant is domiciled or, if 
he is not domiciled in any of the Member States, in 
~hich he has an establishment. 
2. If the defendant is neither domiciled nor has an 
establishment . in any of the Member States, such proceedings shall be brought in the courts of the Member 
State in which the plaintiff is domiciled or, if he is not 
domiciled in any of the Member States, in which he has 
an establishment. 
3. If neither the defendant nor the plaintiff is so 
domiciled or has such an establishment, such proceedings 
shall be brought in the courts of the Member State where 
the Office has its seat. 
4. Notwithstanding the provisions of paragraphs 1, 2 
and 3: 
(a) Article 17 of the Convention on Jurisdiction and 
Enforcement shall apply if the parties agree that a 
different Community trade mark court shall have 
jurisdiction; 
(b) Article 18 of that Convention shall apply if the 
defendant enters an appearance before a different 
Community trade mark court. 
5. Proceedings in respect of the actions and claims 
referred to in Article 92, with the exception of actions for 
a declaration of non-infringement of a Community trade 
mark, may also be brought in the courts of the Member 
State in which the act of infringement has been 
committed or threatened, or in which an act within the 
meaning of Article 9 (3), second sentence, has been 
committed. 
Article 94 
Extent of jurisdiction 
1. A Community trade mark court whose jurisdiction is 
based on Article 93 (1) to (4) shall have jurisdiction in 
respect of: 
acts of infringement committed or threatened within 
the territory of any of the Member States, 
acts within the meaning of Article 9 (3), second 
sentence, committed within the territory of any of the 
Member States. 
2. A Community trade mark court whose jurisdiction is 
based on Article 93 (5) shall have jurisdiction only in 
respect of acts committed or threatened within the 
territory of the Member State in which that court is 
situated. 
Article 95 
Presumption of validity -Defence as to the merits 
1. The Community trade mark courts shall treat the 
Community trade mark as valid unless its validity is put 
in issue by the defendant with a counterclaim for 
revocation or for a declaration of invalidity. 
2. The validity of a Community trade mark may not be 
put in issue in an action for a declaration of 
non-infringement. IP INIlIEEC/T 12 
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14. 1. 94 Official Journal of the European Communities No L 11125 
3. In the actions referred to in Article 92 (a) and (c) a 
plea relating to revocation or invalidity of the 
Community trade mark submitted otherwise than by way 
of a counterclaim shall be admissible in so far as the 
defendant claims that the rights of the proprietor of the 
Community trade mark could be revoked for lack of use 
or that Community trade mark could be declared invalid 
on account of an earlier right of the defendant. 
Article 96 
Counterclaims 
1. A counterclaim for revocation or for a declaration of 
invalidity may only be based on the grounds for 
revocation or invalidity mentioned in this Regulation. 
2. A Community trade mark court shall reject a 
counterclaim for revocation or for a declaration of 
invalidity if a decision taken by the Office relating to the 
same subject matter and cause of action and involving the 
same parties has already become final. 
3. If the counterclaim is brought in a legal action to 
which the proprietor of the trade mark is not already a 
party, he shall be informed thereof and may be joined as 
a party to the action in accordance with the conditions 
set out in national law. 
4. The Community trade mark court with which a 
counterclaim for revocation or for a declaration of 
invalidity of the Community trade mark has been filed 
shall inform the Office of the date on which the 
counterclaim was filed. The latter shall record this fact in 
the Register of Community trade marks. 
5. Article 56 (3), (4), (5) and (6) shall apply. 
6. Where a Community trade mark court has given a 
judgment which has become final on a counterclaim for 
revocation or for invalidity of a Community trade mark, 
a copy of the judgment shall be sent to the Office. Any 
party may request information about such transmission. 
The Office shall mention the judgment in the Register of 
Community trade marks in accordance with the 
provisions of the Implementing Regulation. 
7. The Community trade mark court hearing a 
counterclaim for revocation or for a declaration of 
invalidity may stay the proceedings on application by the 
proprietor of the Community trade mark and after 
hearing the other parties and may request the defendant 
to submit an application for revocation or for a 
declaration of invalidity to the Office within a time limit 
which it shall determine. If the application is not made 
within the time limit, the proceedings shall continue; the 
counterclaim shall be deemed withdrawn. Article 100 (3) 
shall apply. Article 97 
Applicable law 
1. . The Community trade mark courts shall apply the 
provisions of this Regulation. 
2. On all matters not covered by this Regulation a 
Community trade mark court shall apply its national law, 
including its private international law. 
3. Unless otherwise provided in this Regulation, a 
Community trade mark court shall apply the rules of 
procedure governing the same type of action relating to a 
national trade mark in the Member State where it has its 
seat. 
Article 98 
Sanctions 
1. Where a Community trade mark court finds that the 
defendant has infringed or threatened to infringe a 
Community trade mark, it shall, unless there are special 
reasons for not doing so, issue an order prohibiting the 
defendant from proceeding with the acts which infringed 
or would infringe the Community trade mark. It shall 
also take such measures in accordance with its national 
law as are aimed at ensuring that this prohibition is 
complied with. 
2. In all other respects the Community trade mark court 
shall apply the law of the Member State to '.vhich the acts 
of infringement or threatened infringement were 
committed, including the private international law. 
Article 99 
Provisional and protective measures 
1. Application may be made to the courts of a Member 
State, including Community trade mark courts, for such 
provisional, including protective, measures in respect of a 
Community trade mark or Community trade mark 
application as may be available under the law of that 
State in respect of a national trade mark, even if, under 
this Regulation, a Community trade mark court of 
another Member State has jurisdiction as to the substance 
of the matter. 
2. A Community trade mark court whose jurisdiction is 
based on Article 93 (1), (2), (3) or (4) shall have 
jurisdiction to grant provisional and protective measures 
which, subject to any necessary procedure for recognition 
and enforcement pursuant to Title HI of the Convention 
on Jurisdiction and Enforcement, are applicable in the 
territory of any Member State. No other court shall have 
such jurisdiction. 
Article 100 
Specific rules on related actions 
1. A Community trade mark court hearing an action 
referred to in Article 92, other than an action for a JP IN/I/EEC/T 12 
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No L 11126 Official Journal of the European Communities 14. 1. 94 
declaration of non-infringement shall, unless there are 
special grounds for continuing the hearing, of its own· 
motion after hearing the parties or at the request of one 
of the parties and after hearing the other parties, stay the 
proceedings where the validity of the Community trade 
mark is already in issue before another Community trade 
mark court on account of a counterclaim or where an 
application for revocation or for a declaration of 
invalidity has already been filed at the Office. 
2. The Office, when hearing an application for 
revocation or for a declaration of invalidity shall, unless 
there are special grounds for continuing the hearing, of 
its own motion after hearing the parties or at the request 
of one of the parties and after hearing the other parties, 
stay the proceedings where the validity of the Community 
trade mark is adready in issue on account of a 
counterclaim before a Community trade mark court. 
However, if one of the parties to the proceedings before 
the Community trade mark court so requests, the court 
may, after hearing the other parties to these proceedings, 
stay the proceedings. The Office shall in this instance 
continue the proceedings pending before it. 
3. Where the Community trade "'mark court stays the 
proceedings it may order provisional and protective 
measures for the duration of the stay. 
Article 101 
Jurisdiction of Community trade mark courts of second 
instance -Further appeal 
1. An appeal to the Community trade mark courts of 
second instance shall lie from judgments of the 
Community trade mark courts of first instance in respect 
of proceedings arising from the actions and claims 
referred to in Article 92. 
2. The conditions under which an appeal may be lodged 
with a Community trade mark court of second instance 
shall be determined by the national law of the Member 
State in which that court is located. . 
3. The national rules concerning further appeal shall be 
applicable in respect of judgments of Community trade 
mark courts of second instance. SECTION 3 
OTHER DISPUTES CONCERNING COMMUNITY 
TRADE MARKS 
Article 102 
Supplementary provisions on the jurisdiction of national 
courts other than Community trade mark courts 
1. Within the Member State whose courts have 
jurisdiction under Article 90 (1) those courts shall have 
jurisdiction for actions other than those referred to in 
Article 92, which would have jurisdiction ratione loci and 
ratione materiae in the case of actions relating to a 
national trade mark registered in that State. 
2. Actions relating to a Community trade mark, other 
than those referred to in Article 92, for which no court 
has jurisdiction under Article 90 (1) and paragraph 1 of 
this Article may be heard before the. courts of the 
Member State in which the Office has its seat. 
Article 103 
Obligation of the national court 
A national court which is dealing with an action relating 
to a Community trade mark, other than the action 
referred to in Article 92, shall treat the trade mark as 
valid. 
SECTION 4 
TRANSITIONAL PROVISION 
Article 104 
Transitional provision relating to the application of the 
Convention on Jurisdiction and Enforcement 
The provisions of the Convention on Jurisdiction and 
Enforcement which are rendered applicable by the 
preceding Articles shall have effect in respect of any 
Member State ·solely in the text of the Convention which 
is in force in respect of that State at any given time. 
TITLE XI 
EFFECTS ON THE LAWS OF THE MEMBER STATES 
SECTION 1 
CIVIL ACTIONS ON THE BASIS OF MORE THAN ONE 
TRADE MARK 
Article 105 
Simultaneous and successive civil actions on the basis of 
Community trade marks and national trade marks 
1. Where actions for infringement involving' the same 
cause of action and between the same parties are brought in the courts of different Member States, one seized on 
the basis of a Community trade mark and the other 
seized on the basis of a national trade mark: 
(a) the court other than the court first seized shall of its 
own motion decline jurisdiction in favour of that 
court where the trade marks concerned are identical 
and valid for identical goods or services. The court 
which would be required to decline jurisdiction may IP/NI1 IEEC/T 12 
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14. 1. 94 Official Journal of the European Communities No L 11/27 
stay its proceedings if the jurisdiction of the other 
court is contested; 
(b) the court other than the court first seized may stay its 
proceedings where the trade marks concerned are 
identical and valid for similar goods or services and 
where the trade marks concerned are similar and 
valid for identical or similar goods or services. 
2. The court hearing an action for infringement on the 
basis of a Community trade mark shall reject the action if 
a final judgment on the merits has been given on the 
same cause of action and benveen the same parties on the 
basis of an identical national trade mark valid for 
identical goods or services. 
3. The court hearing an action for infringement on the 
basis of a national trade mark shall reject the action if a 
final judgment on the merits has been given on the same 
cause of action and between the same parties on the basis 
of an identical Community trade mark valid for identical 
goods or services. 
4. Paragraphs 1, 2 and 3 shall not apply in respect of -
provisonal, including protective, measures. 
SECTION 2 
APPLICATION OF NATIONAL LAWS FOR THE PURPOSE 
OF PROHIBITING THE USE OF COMMUNITY TRADE 
MARKS 
Article 106 
Prohibition of use of Community trade marks 
1. This Regulation shall, unless otherwise provided for, 
not affect the right existing under the laws of the 
Member States to invoke claims for infringement of 
earlier rights within the meaning of Article 8 or Article 
52 (2) in relation to the use of a later Community trade 
mark. Claims for infringement of earlier rights within the 
meaning of Article 8 (2) and (4) may, however, no longer 
be invoked if the proprietor of the earlier right may no 
longer apply for a declaration that the Community trade 
mark is invalid in accordance with Article 53 (2). 
2. This Regulation shall, unless otherwise provided for, 
not affect the right to bring proceedings under the civil, 
administrative or criminal law of a Member Sate or 
under provisions of Community law for the purpose of' 
prohibiting the use of a Community trade mark to the 
extent that the use of a national trade mark may be 
prohibited under the law of that Member State or under 
Community law. Article 107 
. Prior rights applicable to particular localities 
1. The proprietor of an earlier right which only applies 
to a particular locality may oppose the use of the 
Community trade mark in the territory where his right is 
protected in so far as the law of the Member State 
concerned so permits. 
2. Paragraph 1 shall cease to apply if the proprietor of 
the earlier right has acquiesced in the use of the 
Community trade mark in the territory where his right is 
protected for a period of. five successive years, being 
aware of such use, unless the Community trade mark was 
applied for in bad faith. 
3. The proprietor of the Community trade mark shall 
not be entitled to oppose use of the right referred to in 
paragraph 1 even though that right may no longer be 
invoked against the Community trade mark. 
SECTIO~ 3 
CONVERSION INTO A NATIONAL TRADE MARK 
APPLICATION 
Article 108 
Request for the application of national procedure 
1. The applica~t for or proprietor of a Community trade 
mark may request the conversion of his Community trade 
mark application or Community trade mark into a 
national trade mark application 
(a) to the extent that the Community trade mark 
application is refused, withdrawn, or deemed to be 
withdrawn; 
(b) 'to the extent that the Community trade mark ceases 
to have effect. 
2. Conversion shall not take place: 
(a) where the rights of the proprietor of the Community 
trade mark have been revoked on the grounds of 
non-use, unless in the Member State for which 
conversion is requested the Community trade mark 
has been put to use which would be considered to be 
genuine use under the laws of that Member State; 
(b) for the purpose of protection in a Member State in 
which, in accordance with the decision of the Office 
or of the national court, grounds for refusal of 
registration or grounds for revocation or invalidity 
apply to the Community trade mark application or 
"Community trade mark. 
3. The national trade mark application resulting from 
t,he conversion of a Community trade mark application 
or a Community trade mark shall enjoy in respect of the 
Member State concerned the date of filing or the date of 
priority of that application or trade mark and, where 
appropriate, the seniority of a trade mark of that State 
claimed under Article 34 or 35. IP/N/I/EEC/T 12 
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No L 11/28 Official Journal of the European Communities 14. 1. 94 
4. Where: 
the Community trade mark application is deemed to 
be withdrawn or is refused by a decision of the Office 
which' has become final, 
the Community trade mark ceases to have effect as a 
result ofa decision of the Office which has become 
final or as a result of registration of surrender of the 
Community trade mark, 
the Office shall notify to the applicant or proprietor a 
communication fixing a period of three months from the 
date of that communication in which a request for 
conversion may be fi.led. 
5. Where the Community trade mark application is 
withdrawn or the Community trade mark ceases to have 
effect as a result of failure to renew the registration, the 
request for conversion shall be filed within three months 
after the date on which the Community trade mark 
application is withdrawn or on which the registration of 
the Community trade mark expires. 
6. Where the Community trade mark ceases to have' 
effect as a result of a decision of a national court, the 
request for conversion shall be filed within three months 
after the date on which that decision acquired the 
authority of a final decision. 
7. The effect referred to in Article 32 shall. lapse if the 
request is not filed in due time. 
Article 109 
Submission, publication and transmission of the request 
for conversion 
1. A request for conversion shall be filed with the Office 
and shall specify the Member States in which application 
of the procedure for registration of a national trade mark 
is desired. The request shall not be deemed to be filed 
until the conversion fee has been paid. 
2. ·If the Community trade mark application has been 
published, receipt of any such request shall be recorded in the Register of Community trade marks and the 
request for conversion shall be published. 
3. The Office shall check whether conversion may be 
requested in accordance with Article 108 (1), whether the 
request has been filed within the period laid down in 
Article 108 (4), (5) or (6), as the case may be, and 
whether the conversion fee has been paid. If these 
conditions are fulfilled, the Office shall transmit the 
request to the central industrial property offices of the 
States specified therein. At the request of the central 
industrial property office of a State concerned, the Office 
shall give it any information enabling that office to decide 
as to the admissibility of the request. 
Article 110 
Formal requirements for conversion 
1. Any central industrial property office to which the 
request is transmitted shall decide as to its admissibility, 
2. A Community trade mark application or a 
Community trade mark transmitted in accordance with 
Article 109 shall not be subjected to formal requirements 
of national law which are different from or additional to 
those provided for in this Regulation or in the 
Implementing Regulation. 
3. Any cent~al industrial property office to which the 
request is: transmitted may require that the applicant 
shall, within not less than t\VO months: 
(a) pay the national application fee; 
(b) file a translation in one of the official languages of the 
State in question of the request and of the documents 
accompanying it; 
(c) indicate an address for service in the State in 
question; 
(d) supply a representation of the trade mark in the 
number of copies specified by the State in question. 
TITLE XII 
TIIE OFFICE 
SECTION 1 
GENERAL PROVISIONS 
Article 111 
Legal status 
1. The Office shall be a body of the Community. It shall 
have legal personality. 2. In each of the Member States the Office shall enjoy 
the most extensive legal capacity accorded to legal 
persons under their laws; it may, in particular, acquire or 
dispose of movable and immovable property and may be 
a party to legal proceedings. . 
3. The Office shall be represented by its President. IP/N/1/EEC/T 12 
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14. 1. 94 Official Journal of the European Communities No L 11/29 
Article 112 
Staff 
1. The Staff Regulations of officials of the European 
Communities, the Conditions of Employment of other 
servants of the European' Communities, and the rules 
adopted by agreement between the Institutions of the 
European Communities for giving effect to those Staff 
Regulations and Conditions of Employment shall apply 
to the staff of the Office, without prejudice to the 
application of Article 131 to the members of the Boards 
of Appeal. 
2. \X'ithout prejudice to Article 120, the powers 
conferred on each Institution by the Staff Regulations 
and by the Conditions of Employment of other servants 
shall be exercised by the Office in respect of its staff. 
Article 113 
Privileges and immunities 
The Protocol on the Privileges and Immunities of the 
European Communities shall apply to the Office. 
Article 114 
Liability 
1. The contractual liability of the Office shall be 
governed by the law applicable to the contract in 
question. 
2. The Court of Justice shall be competent to give 
judgment pursuant to any arbitration clause contained in 
a contract concluded by the Office. 
3. In the case of non-contractual liability, the Office 
shall, in accordance with the general principles common 
to the laws of the Member States, make good any 
damage caused by its departments or by its servants in 
the performance of their duties. 
4. The Court of Justice shall have jurisdiction in 
disputes relating to compensation for the damage referred 
to in paragraph 3. 
5. The personal liability of its servants towards the 
Office shall be governed by the provisions laid down in 
their Staff Regulations or in the Conditions of 
Employment applicable to them. 
Article 115 
Languages 
1. The application for a Community trade mark shall be 
filed in one. of the official languages of the European 
Community. 
2. The languages of the Office shall be English, French, 
German, Italian and Spanish. 3. The applicant must indicate a second language which 
shall be a language of the Office the use of which he 
accepts as a possible language of proceedings for 
opposition, revocation or invalidity proceedings. 
If the application was filed in a language which is not 
one of the languages of the Office, the Office shall 
arrange to have the application, as described in Article 26 
(i), translated into the language indicated by the 
applicant. 
4. Where the applicant for a Community trade mark is 
the sole party to proceedings before the Office, the 
language of proceedings shall be the language used for 
filing the application for a Community trade mark. If the 
application was made in a language other than the 
languages of the Office, the Office may send written 
communications to the applicant in the second language 
indicated by the applicant in his application. 
5. The notice of opposition and an application for 
revocation or invalidity shall be filed in one of the 
languages of the Office. 
6. If the language chosen, in accordance with paragraph 
5, for the notice of opposition or the application for 
revocation or invalidity is the language of the application 
for a trade 'mark or the second language indicated when 
the application was filed, that language shall be the 
language of the proceedings. 
If the language chosen, in accordance with paragraph 5, 
for the notice of opposition or the application for 
revocation or invalidity is neither the language of the 
application for a trade mark nor the second language 
indicated when the application was filed, the opposing 
party or the party seeking revocation or invalidity shall 
be required to produce, at his own expense, a translation 
of his application either into the language of the 
application for a trade mark, provided that it is a 
language of, the Office, or into the second language 
indicated when the application \vas filed. The translation 
shall be produced within the period prescribed in the 
implementing regl,llation. The language into which the 
application has been translated shall then become, the 
language of the proceedings. 
7. Parties to opposition, revocation, invalidity or appeal 
proceedings may agree that a different official language 
of the European Community is to be the language of the 
proceedings. 
Article 116 
Publication; entries in the Register 
1. An application for a Community trade mark, ,as 
described in Article 26 (1), and all other information the 
publication of which is prescribed by this Regulation or 
the implementing regulation, shall be published in all the 
official languages of the European Community. 
2. All entries in the Register of Community trade marks 
shall be made in all the official languages of the 
European Community. IF 1Nl 1/EEC/T 12 
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No L 11130 Official Journal of the European Communities 14. 1. 94 
3. In cases of doubt, the text in the language of the 
Office in which the application for the Community trade 
mark was filed shall be authentic. If the application was 
filed in an official Janguage of the European Community 
other than one of the languages of the Office, the text in 
the second language indicated by the applicant shall be 
authentic. 
Article 117 
The translation services required for the functioning of 
the Office shall be provided by the Translation Centre of 
the Bodies of the Union once this begins operation. 
Article 118 
Control of legality 
1. The Commission shall check the legality of those acts 
of the President of the Office in respect of which 
Community law does not provide for any check on 
legality by another body and of acts of the Budget 
Committee attached to the Office pursuant to Article 
133. 
2. It shall require that any unlawful acts as referred to in 
paragra ph 1 be altered or annulled .. 
3. Member States and any person directly and 
personally involved may refer to the Commission any act 
as referred to in paragraph 1, whether express or implied, 
for the Commission to examine the legality of that act. 
Referral shall be made to the Commission within 15 days 
of the day on which the party concerned first became 
aware of the act in question. The Commission shall take 
a decision within one month. If no decision has been 
taken within this period, the case shall be deemed to have 
been dismissed. 
SECTION 2 
MANAGEMENT OF THE OFFICE 
Article 119 
Powers of the President 
1. The Office shall be managed by the President. 
2. To this end the President shall have in particular the 
following functions and powers: 
(a) he shall take all necessary steps, including the 
adoption of internal administrative instructions and 
the publication of notices, to ensure the functioning 
of the Office; 
(b) he may place before the Commission any proposal to 
amend this Regulation, the Implementing Regulation, 
the rules of procedure of the Bo~rds of Appeal, the 
fees regulations and any other rules applying to 
Community trade marks after consulting the Administrative Board and, in the case of the fees 
regulations and the budgetary provisions of this 
Regulation, the Budget Committee; 
(c) he shall draw up the estimates of the revenue and 
expenditure of the Office and shall implement the 
budget; 
(d) he shall submit a management report to the 
Commission, the European Parliament and the 
Administrative Board each year; 
(e) he shall exercise in respect of the staff the powers laid 
down in Article 112 (2); 
(f) he may delegate his powers. 
3. The President shall be assisted by one or more 
Vice-Presidents. If the President is absent or indisposed, 
the Vice-President or one of the Vice-Presidents shall take 
his place in accordance with the procedure laid down by 
the Administrative Board. 
Article 120 
Appointment of senior. officials 
1. The President of the Office shall be appointed by the 
Council from a list of at most three candidates, which 
shall be prepared by the Administrative Board. Power to 
dismiss the President shall lie with the Council, acting on 
a proposal from the Administrative Board. 
2. The term of office of the President shall not exceed 
five years. This term of office sl}.all be renewable. 
3. The Vice-President or Vice-Presidents of the Office 
shall be appointed or dismissed as in paragraph 1, after 
consultation of the President. 
4. The Council shall exercise disciplinary authority over 
the officials referred to in paragraphs 1 and 3 of this 
Article. 
SECTION 3 
ADMINISTRATIVE BOARD 
Article 121 
Creation and powers 
1. An Administrative Board is hereby set up, attached to 
the Office. Without prejudice to the powers attributed to 
the Budget Committee in Section 5 -budget and 
financial control -the Administrative Board shall have 
the powers defined below. 
2. The Administrative Board shall draw up the lists of 
candidates provided for in Article 120. 
3. It shall fix the date for the first filing of Community 
trade mark applications, pursuant to Article 143 (3). IF IN I lIEEC/T 12 
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4. It shall advise the President on matters for which the 
Office is responsible. 
5. It shall be consulted before adoption of the guidelines 
for examination in the Office and in the other cases 
provided for in this Regulation. 
6. It may deliver opinions and requests for information 
to the President and to the Commission where it· 
considers that this is necessary. 
Article 122 
Composition 
1. The Administrative Board shall be composed of one 
representative of each Member State and one 
representative of the Commission and their alternates. 
2. The members of the Administrative Board may, 
subject [0 the provisions of its rules of procedure, be 
assisted by advisers or experts. 
Article 123 
Chairmanship 
1. The Administrative Board shall elect a chairman and 
a deputy chairman from among its members. The deputy 
chairman shall ex officio replace the chairman in the 
event of his being prevented from attending to his 
duties: . 
2. The duration of the terms of office of the chairman 
and the deputy chairman shall be three years. The terms 
of office shall be renewable. 
Article 124 
Meetings 
1. Meetings of the Administrative Board shall be 
convened by its chairman. 
2. The President of the Office shall take part in the 
deliberations, unless the Administrative Board decides 
otherwise. 
3. The Administrative Board shall hold an ordinary 
meeting once a year; in addition, it shall meet on the 
initiative of its chairman or at the request of the 
Commission or of one-third of the Member States. 
4. The Administrative Board shall adopt rules of 
procedure. 
5. The Administrative Board shall take its decisions by a 
simple majority of the representatives of the Member 
States. However, a majority of three-quarters of the 
representatives of the Member States shall be required for 
the decisions which the Administrative Board is 
empowered to take under Article 120 (1) and (3). In both 
cases each Member State shall have one vote. 6. The Administrative Board may invite observers to 
attend its meetings. 
7. The Secretariat for the Administrative Board shall be 
provided by the Office. 
SECTION 4 
IMPLEMENTATION OF PROCEDURES 
Article 125 
Competence 
For taking decisions in connection with the procedures 
laid down in this Regulation, the following shall be 
competent: 
(a) Examiners; 
(b) Opposition Divisions; 
(c) an Administration of Trade Marks and Legal 
Division; 
(d) Cancellation Divisions; 
(e) Boards of Appeal. 
Article 126 
Examiners 
An examiner shall be responsible for taking decisions on 
behalf of the Office in relation to an application for 
registration of a Community trade mark, including the 
. matters referred to in Articles 36, 37, 38 and 66, except 
in so far as an Opposition Division is responsible. 
Article 127 
Opposition Divisions 
1. An Opposition Division shall be responsible for 
taking decisions on an opposition to an application to 
register a Community trade mark. 
2. An Opposition Division shall consist of three 
members. At least one of the members must be legally 
qualified. 
Article 128 
Administration of Trade Marks and Legal Division 
1. The Administration of Trade Marks and Legal 
Division shall be responsible for those decisions required 
by this Regulation which do not fall within the 
competence of an examiner, an Opposition Division or a 
Cancellation Division. It shall in particular be responsible 
for decisions in respect of entries in the Register of 
Community trade marks. IP/NI1 IEEC/T 12 
Page 33 
No L 11132 Official Journal of the European Communities 14. 1. 94 
2. It shall also be responsible for keeping the list 
of professional representatives which is referred to in 
Article 89. 
3. A decision of the Division shall be taken by one 
member. 
Article 129 
Cancellation Divisions 
1. A Cancellation Division shall be responsible for 
taking decisions in relation to an application for the 
revocation or declaration of invalidity of a Community 
trade mark. 
2. A Cancellation Division shall consist of three 
members. At least one of the members must be legally 
qualified. 
Article 130 
Boards of Appeal 
1. The Boards of Appeal shall be responsible for 
deciding on appeals from ~ecisions of the examiners, 
Opposition Divisions, Administration of Trade Marks 
and Legal Division and Cancellation Divisions. 
2. A Board of Appeal shall consist of three members. At 
least two of the members must be legally qualified. 
Article 131 
Independence of the members of the Boards of Appeal 
1. The members, including the chairmen, of the Boards 
of Appeal shall be appointed, in accordance with the 
procedure laid down in Article 120, for the appointment 
of the President of the Office, for a term of five years. 
They may not be removed from office during this term, 
unless there are serious grounds for such removal and the 
Court of Justice, on application by the body which 
appointed them, takes a decision to this effect. Their term 
of office shall be renewable. 
2. The members of the Boards of Appeal shall be 
independent. In their decisions they shall not be bound 
by any instructions. . 
3. The members of the Boards of Appeal may not be 
examiners or members of the Opposition Divisions, 
Administration of Trade Marks and Legal Division or 
Cancellation Divisions. 
Article 132 
Exclusion and objection 
1. Examiners and members of the Divisions set uP. 
within the Office or of the Boards of Appeal may not take part in any proceedings if they have any personal 
interest therein, or if they have previously been involved 
as representatives of one of the parties. Two of the three 
members of an Opposition Division shall not have taken 
part in examining the application. Members of the 
Cancellation Divisions may not take part in any 
proceedings if they have participated in the final decision 
on the case in the proceedings for registration or 
opposition proceedings. Members of the. Boards of 
Appeal may not take part in appeal proceedings if th~y 
participated in the decision under appeal. 
2. If, for one of the reasons mentioned in paragraph 1 
or for any other reason, a member of a Division or of a 
Board of Appeal considers that he should not take part in 
any proceedings, he shall inform the Division or Board 
accordingly. 
3. Examiners and members of the Divisions or of a 
Board of Appeal may be objected to by any party for one 
of the reasons mentioned in paragraph 1, or if suspected 
of partiality. An objection shall not be admissible if, 
while being aware of a reason for objection, the party has 
taken a procedural step. No objection may be based 
upon the nationality of examiners or members. 
4. The Divisions and the Boards of Appeal shall decide 
as to the action to be taken in the cases specified in 
paragraphs 2 and 3 without the participation of the 
member concerned. For the purposes of taking this 
decision the member who withdraws or has been 
objected to shall be replaced in the Division or Board of 
Appeal by his alternate. 
SECTION 5 
BUDGET AND FINANCIAL CONTROL 
Article 133 
Budget Committee 
1. A Budget Committee is hereby set up, attached to the 
Office. The Budget Committee shall have the powers 
assigned to it in this Section and ·in Article 39 (4). 
2. Articles 121 (6), 122, 123 and 124 (1) to (4), (6) and 
(7) shall apply to the Budget Committee mutatis 
mutandis. 
3. The Budget Committee shall take its decisions by a 
simple majority of the representatives of the Member 
States. However, a majority of three-quarters of the 
representatives of the Member States shall be required for 
the decisions which the Budget Committee is empowered 
to take under Articles 39 (4), 135 (3) and 138. In both 
cases each Member State shall have one vote. JP 1Nl 1 IEEC/T 12 
Page 34 
14. 1. 94 Official Journal of the European Communities No L 11/33 
Article 134 
Budget 
1. Estimates of all the Office's revenue and expenditure 
shall be prepared for each financial year and shall be 
shown in the Office's budget, and each financial year 
shall correspond with the calendar year. 
2. The revenue and expenditure shown in the budget 
shall be in balance. 
3. Revenue shall comprise, without prejudice to other 
types of income, total fees payable under the fees 
regulations, and, to the extent necessary, a subsidy 
entered against a specific heading of the general budget of 
the European Communities, Commission Section. 
Article 135 
Preparation of the budget 
1. The President shall draw up each year an estimate of 
the Office's revenue and expenditure for the following 
year and shall send it to the Budget Committee not later 
than 31 March in each year, together with a list of 
posts. 
2. Should the budget estimates provide for a 
Community subsidy, the Budget Committee shall 
immediately forward the estimate to the Commission, 
which shall forward it to the budget authority of' the 
Communities. The Commission may attach an opinion 
on the estimate along with an alternative estimate. 
3. The Budget Committee shall adopt the budget, which 
shall include the Office's list of posts. Should the budget 
estimates contain a subsidy from the general budget of 
the Communities, the Office's budget shall, if necessary, 
be adjusted. 
Article 136 
Financial control 
Control of commitment and payment of all expenditure 
and control of the existence and recovery of all revenue of the Office shall be carried out by the Financial 
Controller appointed by the Budget Committee. 
Article 137 
Auditing of accounts 
1. Not later than 31 March in each year the President 
shall transmit to the Commission, the European 
Parliament, the Budget Cominittee and the Court of 
Auditors accounts of the Office's total revenue and 
expenditure for the preceding financial year. The Court 
of Auditors shall examine them in accordance with 
Article 188c of the Treaty. 
2. The Budget Committee shall give a discharge to the 
President of the Office in respect of the implementation 
of the budget. 
Article 138 
Financial provisions 
The Budget Committee shall, after consulting the Court 
of Auditors of the European Communities and the 
Commission, adopt internal financial prOVlSlOns 
specifying, in particular, the procedure for establishing 
and implementing the Office's budget. As far as is 
compatible with the particular nature of the Office, the 
financial provisions shall be based on the. financial 
regulations adopted for other bodies set up by the 
Community. 
Article 139 
Fees regulations 
1. The fees regulations shall determine in particular the 
amounts of the fees and the ways in which they are to be 
paid. 
2. The amounts of the fees shall be fixed at such a level 
as to ensure that the revenue in respect thereof is in· 
principle sufficient for the budget of the Office to be 
balanced. 
3. The fees regulations shall be adopted and amended 
in accordance with the procedure laid down in 
Article 141. 
TITLE XIII 
FINAL PROVISIONS 
Article 140 
Community implementing provisions 
1. The rules implementing this Regulation shall be 
adopted in an Implementing Regulation. 2. In addition to the fees provided for in the preceding 
Articles, fees shall be charged, in accordance with the 
detailed rules of application laid down in the 
Implem~nting Regulation, in the cases listed below: 
1. alteration of the representation of a Community 
trade mark; IPINI l/EEC/T 12 
Page 35 
No L 11/34 Official Journal of the European Communities 14. 1. 94 
2. late payment of the registration fee; . 
3. issue of a copy of the certificate of registration; 
4. registration of the transfer of a Community trade 
mark; 
5. registration of a licence or another right in respect of 
a Community trade mark; 
6. registration of a licence or another ·right in respect of 
an application for a Community trade mark; 
7. cancellation of the registration of a licence or 
another right; 
8. alteration of a registered Community trade mark; 
9. issue of an extract from the Register; 
10. inspection of the files; 
11. issue of copies of file documents; 
12. issue of certified copies of the application; 
13. communication of information in a file; 
14. review of the determination of the procedural costs 
to be refunded. 
3. The Implementing Regulation and the rules of 
procedure of the Boards .of Appeal shall be adopted and 
amended in accordance with the procedure laid down in 
Article 141. 
Article 141 
Establishment of a committee and procedure for the 
adoption of implementing regulations 
1. The Commission shall be assisted by a Committee on 
Fees, Implementation Rules and the Procedure of the 
Boards of Appeal of the Office for Harmonization in the 
Internal Market (trade marks and designs), which shall 
be composed of representatives of the Member States and 
chaired by a representative of the Commission. 
2. The representative of the Commission shall submit to 
the Committee a draft of the measures to be taken. The 
Committee shall deliver its opinion on the draft within a 
time limit which the chairman may lay down according 
to the urgency of the matter. The opinion shall be 
delivered by the majority laid down in Article 148 (2) of 
the Treaty in the case of decisions which the Co'uncil is 
required to adopt on a proposal from the Commission. 
The votes of the representatives of the Member States within the Committee shall be weighted in the manner set 
our in that Article. The chairman shall not vote. 
The Commission shall adopt the measures envisaged if 
they are in accordance with the opinion of the 
Committee. 
If the measures envisaged are not in accordance with the 
opinion of the Committee, or if no opinion is delivered, 
the Commission shall, without delay, submit to the 
Council a proposal relating to the measures to be taken. 
The Council shall act by a qualified majority. 
If, on the expiry of a period of three months from the 
date of referral to the Council, the Council has not acted, 
the proposed measures shall be adopted by the 
Commission, save where the Council has decided against 
the measures by a simple majority. 
Article 142 
Compatibility with other Community legal provisions 
This Regulation shall not affect Council Regulation 
(EEC) No 2081192 on the protection of geographical 
indications and designations of origin for agricultural 
products and foodstuffs (1) of 14 July 1992, and in 
particular Article 14 thereof. 
Article 143 
Entry into force 
1. This Regulation shall enter into force on the 60th day 
following that of its publication in the Official Journal of 
the Europemi Communities. 
2. The Member States shall within three years following 
entry into force of this Regulation take the necessary 
measures for the purpose of implementing Articles 91 
and 110 hereof and shall forthwith inform the 
Commission of those measures. 
3. Applications for Community trade marks may be 
filed at the Office from the date fixed by the 
Administrative Board on the recommendation of the 
President of the Office. 
4. Applications for Community trade marks filed within 
three months before the date referred to in paragraph 3 
shall be deemed to have been filed on that date. 
(1) OJ No L 208, 24. 7. 1992, p. 1. 14. 1. 94 IP/N/I/EEC/T 12 
Page 36 
Official Journal of the European Communities 
This Regulation shall be binding in its entirety and directly applicable in all .Member 
States. 
Done at Brussels, 20 December 1993. 
For the Council 
The President 
A. BOURGEOIS No L ~1/35 No L 11/36 Official Journal of the European Communities IP IN I1/EEC/T 12 
Page 37 
Statement by the Council-and the Commission on the seat of the Office for Harmonization in 
the Internal Market (trade marks and designs) 
'In adopting the Regulation on the Community Trade Mark, the Council and the Commission 
note: 
that the representatives of the Governments of the Member States, meeting at Head of State 
an"d Government level on 29 October 1993, decided that the Office for Harmonization in 
the Internal Market (trade marks and designs) should have its seat in Spain, in a town to be 
determined by the Spanish Government; 
that the Spanish Government has designated Alicante as the seat of the Office.' 14. 1. 94 IPINI 1 IEEC/T /2 
Page 38 
31. 12. 94 Official Journal of the European Communities No L 349/83 
COUNCIL REGULATION (EC) No 3288/94 
of 22 December 1994 
amending Regulation (EC) No 40/94 on the Community trade mark for the 
implementation of the agreements concluded in the framework of the Uruguay Round 
THE COU{\CIL OF THE EUROPEA:-\ U?'\I00J, 
Ha\'ing regard to the Treaty establishing the European 
Community, and in particular Article 235 thereof, 
H~1\"ing regard to the proposal from the Commission, 
Having regard to the opinion of the European 
Parliament (I), 
\,\'hereas the .-\greement establishing the World Trade 
Organization (hereinafter, the '\'\1[0 Agreement') was 
signed on behalf of the Communin'; whereas the 
Agreement on Trade-Related Aspects' of Intellectual 
Property Rights (hereinafter, the -TRIPs Agreement'), 
~lnnexed to the WTO Agreement, contains detailed 
provisions on the protection of intellectual property 
rights whose purpose is the establishment of international 
disciplines in this area in order to promote international 
trade and pre\'ent trade distortions and friction due to 
the lack of adequate and effective intellectual property 
protection; 
\\'hereas in order to ensure that all relevant Community 
legislation is in full compliance with the TRIPs 
Agreement, the Community must take certain measures 
in relation to current Community acts on the protection 
of intellectual property rights; whereas these measures 
enr3il in some respects the amendment or modification of 
Community acts; whereas these measures also entail 
complementing current Community acts; 
\'X'hereas Regulation (EC) 1'0 40194 creates the 
Comn1l1nity trade mark (1); ,,,hereas Article 5 of 
Regulation (EC) :-':0 40194 defines the. 'Persons who can 
be proprietors of Community trade marks' by referring 
notably to the Paris Convention for the protection of 
industrial property and requires reciprocal national 
treatment from countries which are not parties to the 
PJris Com'ention; whereas Article 29 of Regulation (ECl 
:\0 40/94, concerning the right of priority, also needs to 
be amended in this respect; whereas in order to comply 
with the national treatment obligation in Article 3 of the 
TRIPs Agreement, these provisions should be modified to 
(l) Opinion delivered on 14 December 1994 (not yet published 
in the Official Journal). 
(~) OJ >J'o L 11, 14. L 1994, p. 1. ensure that nationals' of all \'{I[O Members, even if the 
Member in question is not a party to the Paris 
Convention. receive a treatment no less favourable than 
that accorded to nationals of Community Member 
States; 
Whereas Arride 23 (2) of the TRIPs Agreement provides 
for the refusal or invalidation of trade marks which 
contain or consist of false geographical indications for 
wines and spirits without the condition that they are of 
sllch a nature as to decei"e the public, a new 
subparagraph (j) has to be added to Article 7 (1) of 
Regulation (EC) No 40194, 
HAS ADOPTED THIS REGULATIO~: 
Article 1 
Regulation (Ee) No 40194 is amended as follows: 
1. Article 5 (1) (b) shall be replaced by the following: 
'(b) nationals of other States which are parties to the 
Paris Com'ention for the protection of industrial 
property, hereinafter referred to as 'the Paris 
Com'ention', or to the Agreement establishing 
the \Vorld Trade Organization;' 
2. Article 5 (1) (cl) shall be replaced by the following: 
'(d) nationals, other. than those referred to under 
subparagraph (c), of any State which is not party 
to the Paris Convention or to the Agreement 
establishing the \Vorld Trade Organization and 
which, according to published findings, accords 
to nationals of all the Member States the same 
protection for trade marks as it accords to its 
own nationals and, if nationals of the ~1ember 
States are required to prove registration in the 
country of origin, recognizes the registration of 
Community trade marks as such proof.' 
3. In Article 7 (1) after subparagraph (i) the following 
shall be added: 
'(j) trade marks for \vines which contain or consist 
of a geographical indication identifying wines or 
for spirits which contain or consist of a IP/N/lIEEC/T 12 
Page 39 
No L 349/84 Official Journal of the European Communities 31. 12. 94 
geographical indication identifying spirits with 
respect to such wines or spirits not having that 
origin.' 
4.-' Article 29 (1) shall be replaced by the following: 
'1. A person who has duly filed an application for a 
trade mark in or for any Stare party re the Paris 
Convention or to the Agreement establishing the 
World Trade Organization, or his successors in title, 
shall enjoy, for the purpose .of filing a Community 
trade mark application for the same trade mark in 
respect of goods or sen'ices which are identical with 
or contained within those for which the application 
has been filed, a right or priority during a period of 
six months from the date of filing of the first 
application.' 5. Article 29 (5) shall be replaced by the following: 
'5. If the first filing has been made in a State which 
is not a party to the Paris Convention or to the 
Agreement establishing the \,;rorld Trade 
Organization, paragraphs 1 to 4 shall apply only in so 
far as that State, according to published findings, 
grams, on the basis of the first filing made at the 
Office and subject to conditions equivalent re those 
laid down in this Regulation, a right of priority 
having equivalent effect.' 
Article 2 
This Regulation shall enter into force on 1 January 
1995. 
It shall be applicable as of 1 January 1996. 
This Regulation shall be binding in its entirety and directly applicable in all ~lember 
States. 
Done at Brussels, 22 December 1994. 
For the COZlncil 
The President 
H. SEEHOFER 