Right to prohibit preparatory acts in relation to the use of packaging or other means

Where the risk exists that the packaging, labels, tags, security or authenticity features or devices or any other means to which the mark is affixed could be used in relation to goods or services and such use would constitute an infringement of the rights of the proprietor of an EU trade mark under Article 9(2) and (3), the proprietor of that trade mark shall have the right to prohibit the following acts if carried out in the course of trade:

(a)affixing a sign identical with, or similar to, the EU trade mark on packaging, labels, tags, security or authenticity features or devices or any other means to which the mark may be affixed;

(b)offering or placing on the market, or stocking for those purposes, or importing or exporting, packaging, labels, tags, security or authenticity features or devices or any other means to which the mark is affixed.

Date from which rights against third parties prevail

1. The rights conferred by an EU trade mark shall prevail against third parties from the date of publication of the registration of the trade mark.

2. Reasonable compensation may be claimed in respect of acts occurring after the date of publication of an EU trade mark application, where those acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication.

3. A court seized of a case shall not decide upon the merits of that case until the registration has been published.

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Limitation of the effects of an EU trade mark

1. An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:

(a)the name or address of the third party, where that third party is a natural person;

(b)signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services;

(c)the EU trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts.

2. Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters.

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Filing of applications

1. An application for an EU trade mark shall be filed at the Office.

2. The Office shall issue to the applicant, without delay, a receipt which shall include at least the file number, a representation, description or other identification of the mark, the nature and the number of the documents and the date of their receipt. That receipt may be issued by electronic means.

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Date of filing

The date of filing of an EU trade mark application shall be the date on which the documents containing the information specified in Article 26(1) are filed with the Office by the applicant, subject to payment of the application fee within one month of filing those documents.

Designation and classification of goods and services

1. Goods and services in respect of which trade mark registration is applied for shall be classified in conformity with the system of classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 (‘the Nice Classification’).

2. The goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought.

3. For the purposes of paragraph 2, the general indications included in the class headings of the Nice Classification or other general terms may be used, provided that they comply with the requisite standards of clarity and precision set out in this Article.

4. The Office shall reject an application in respect of indications or terms which are unclear or imprecise, where the applicant does not suggest an acceptable wording within a period set by the Office to that effect.

5. The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services which cannot be so understood.

6. Where the applicant requests registration for more than one class, the applicant shall group the goods and services according to the classes of the Nice Classification, each group being preceded by the number of the class to which that group of goods or services belongs, and shall present them in the order of the classes.

7. Goods and services shall not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification. Goods and services shall not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.

8. Proprietors of EU trade marks applied for before 22 June 2012 which are registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing.

The declaration shall be filed at the Office by 24 September 2016, and shall indicate, in a clear, precise and specific manner, the goods and services, other than those clearly covered by the literal meaning of the indications of the class heading, originally covered by the proprietor's intention. The Office shall take appropriate measures to amend the Register accordingly. The possibility to make a declaration in accordance with the first subparagraph of this paragraph shall be without prejudice to the application of Article 15, Article 42(2), Article 51(1)(a), and Article 57(2).

EU trade marks for which no declaration is filed within the period referred to in the second subparagraph shall be deemed to extend, as from the expiry of that period, only to goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class.

9. Where the register is amended, the exclusive rights conferred by the EU trade mark under Article 9 shall not prevent a third party from continuing to use a trade mark in relation to goods or services where and to the extent that the use of the trade mark for those goods or services:

(a)commenced before the register was amended; and

(b)did not infringe the proprietor's rights based on the literal meaning of the record of the goods and services in the register at that time.

In addition, the amendment of the list of goods or services recorded in the register shall not give the proprietor of the EU trade mark the right to oppose or to apply for a declaration of invalidity of a later trade mark where and to the extent that:

(a)the later trade mark was either in use, or an application had been made to register the trade mark, for goods or services before the register was amended; and

(b)the use of the trade mark in relation to those goods or services did not infringe, or would not have infringed, the proprietor's rights based on the literal meaning of the record of the goods and services in the register at that time.

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Claiming priority

2. The Commission shall adopt implementing acts specifying the kind of documentation to be filed for claiming the priority of a previous application in accordance with paragraph 1 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).

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Search report

1. The Office shall, at the request of the applicant for the EU trade mark when filing the application, draw up a European Union search report (‘EU search report’) citing those earlier EU trade marks or EU trade mark applications discovered which may be invoked under Article 8 against the registration of the EU trade mark applied for.

2. Where, at the time of filing an EU trade mark application, the applicant requests that a search report be prepared by the central industrial property offices of the Member States and where the appropriate search fee has been paid within the time limit for the payment of the filing fee, the Office shall transmit without delay a copy of the EU trade mark application 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 EU trade mark applications.

3. Each of the central industrial property offices of the Member States referred to in paragraph 2 of this Article shall communicate a search report which shall either cite any earlier national trade marks, national trade mark applications or trade marks registered under international agreements, having effect in the Member State or Member States concerned, which have been discovered and which may be invoked under Article 8 against the registration of the EU trade mark applied for, or state that the search has revealed no such rights.

4. The Office, after consulting the Management Board provided for in Article 124 (‘the Management Board’), shall establish the contents and modalities for the reports.

5. The Office shall pay an amount to each central industrial property office for each search report provided by the 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.

6. The Office shall transmit to the applicant for the EU trade mark the EU search report requested and any requested national search reports received.

7. Upon publication of the EU trade mark application, the Office shall inform the proprietors of any earlier EU trade marks, or EU trade mark applications cited in the EU search report of the publication of the EU trade mark application. The latter shall apply irrespective of whether the applicant has requested to receive the EU search report, unless the proprietor of an earlier registration or application requests not to receive the notification.

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Publication of the application

1. If the conditions which the application for an EU trade mark is required to satisfy have been fulfilled, the application shall be published for the purposes of Article 41 to the extent that it has not been refused pursuant to Article 37.

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2. Where, after publication, the application is refused under Article 37, the decision that it has been refused shall be published upon becoming final.

5. The Commission shall adopt implementing acts laying down the details to be contained in the publication of the application. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).

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Observations by third parties

1. Any natural or legal person and any group or body representing manufacturers, producers, suppliers of services, traders or consumers may submit to the Office written observations, explaining on which grounds, under Articles 5 and 7, the trade mark should not be registered ex officio.

Persons and groups or bodies as referred to in the first subparagraph shall not be parties to the proceedings before the Office.

2. Third party observations shall be submitted before the end of the opposition period or, where an opposition against the trade mark has been filed, before the final decision on the opposition is taken.

3. The submission referred to in paragraph 1 shall be without prejudice to the right of the Office to re-open the examination of absolute grounds on its own initiative at any time before registration, where appropriate.

4. The observations referred to in paragraph 1 shall be communicated to the applicant who may comment on them.

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Delegation of powers

The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the details of the procedure for filing and examining an opposition set out in Articles 41 and 42.

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Division of the application

1. The applicant may divide the application by declaring that some of the goods or services included in the original application will be the subject of one or more divisional applications. The goods or services in the divisional application shall not overlap with the goods or services which remain in the original application or those which are included in other divisional applications.

2. The declaration of division shall not be admissible:

(a)if, where an opposition has been entered against the original application, such a divisional application has the effect of introducing a division amongst the goods or services against which the opposition has been directed, until the decision of the Opposition Division has become final or the opposition proceedings are finally terminated otherwise;

(b)during the periods laid down in the Implementing Regulation.

3. The declaration of division must comply with the provisions set out in the Implementing Regulation.

4. The declaration of division shall be subject to a fee. The declaration shall be deemed not to have been made until the fee has been paid.

5. The division shall take effect on the date on which it is recorded in the files kept by the Office concerning the original application.

6. All requests and applications submitted and all fees paid with regard to the original application prior to the date on which the Office receives the declaration of division are deemed also to have been submitted or paid with regard to the divisional application or applications. The fees for the original application which have been duly paid prior to the date on which the declaration of division is received shall not be refunded.

7. The divisional application shall preserve the filing date and any priority date and seniority date of the original application.

9. The Commission shall adopt implementing acts specifying:

(a)the details to be contained in a declaration of the division of an application made pursuant to paragraph 1;

(b)the details as to how to process a declaration of the division of an application, ensuring that a separate file, including a new application number, is established for the divisional application;

(c)the details to be contained in the publication of the divisional application pursuant to paragraph 8.

Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).

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Registration

1. Where an application meets the requirements set out in this Regulation and where no notice of opposition has been given within the period referred to in Article 41(1) or where any opposition entered has been finally disposed of by withdrawal, rejection or other disposition, the trade mark and the particulars referred to in Article 87(2) shall be recorded in the Register. The registration shall be published.

2. The Office shall issue a certificate of registration. That certificate may be issued by electronic means. The Office shall provide certified or uncertified copies of the certificate subject to the payment of a fee, where those copies are issued other than by electronic means.

3. The Commission shall adopt implementing acts specifying the details to be contained in and the form of the certificate of registration referred to in paragraph 2 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).

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Delegation of powers

The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the details of the procedures governing the revocation and declaration of invalidity of an EU trade mark as referred to in Articles 56 and 57, as well as the transfer of an EU trade mark registered in the name of an agent as referred to in Article 18.

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Regulations governing use of the EU certification mark

3. The Commission shall adopt implementing acts specifying the details to be contained in the regulations referred to in paragraph 2 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).

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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.

Taking of evidence

1. In any proceedings before the Office, the means of giving or obtaining 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.

6. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the detailed arrangements for the taking of evidence.

Notification

5. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the detailed arrangements for notification.

Communications to the Office

2. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the rules on the means of communication, including the electronic means of communication, to be used by the parties to proceedings before the Office and the forms to be made available by the Office.

Time limits

5. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the details regarding the calculation and duration of time limits.

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Revocation of decisions

1. Where the Office has made an entry in the Register or taken a decision which contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked. Where there is only one party to the proceedings and the entry or the act affects its rights, cancellation or revocation shall be determined even if the error was not evident to the party.

2. Cancellation or revocation as referred to in paragraph 1 shall be determined, ex officio or at the request of one of the parties to the proceedings, by the department which made the entry or took the decision. Cancellation or revocation shall be determined within six months from the date on which the entry was made in the Register or the decision was taken, after consultation with the parties to the proceedings and any proprietor of rights to the Community trade mark in question that are entered in the Register.

3. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the procedure for the revocation of a decision or for the cancellation of an entry in the Register.

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Interruption of proceedings

3. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the detailed arrangements for the resumption of proceedings before the Office.

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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 recognised in the Member States.

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 paragraph 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 judgment has acquired the authority of a final decision.

Register of EU trade marks

1. The Office shall keep a Register of EU trade marks which it shall keep up to date.

2. The Register shall contain the following entries relating to EU trade mark applications and registrations:

(a)the date of filing the application;

(b)the file number of the application;

(c)the date of the publication of the application;

(d)the name and address of the applicant;

(e)the name and business address of the representative, other than a representative as referred to in the first sentence of Article 92(3);

(f)the representation of the mark, with indications as to its nature; and, where applicable, a description of the mark;

(g)an indication of the goods and services by their names;

(h)particulars of claims of priority pursuant to Article 30;

(i)particulars of claims of exhibition priority pursuant to Article 33;

(j)particulars of claims of seniority of a registered earlier trade mark as referred to in Article 34;

(k)a statement that the mark has become distinctive in consequence of the use which has been made of it, pursuant to Article 7(3);

(l)an indication that the mark is a collective mark;

(n)the language in which the application was filed and the second language which the applicant has indicated in his application, pursuant to Article 119(3);

(o)the date of registration of the mark in the Register and the registration number;

(p)a statement that the application is the result of a transformation of an international registration designating the Union, pursuant to Article 161 of this Regulation, together with the date of the international registration pursuant to Article 3(4) of the Madrid Protocol or the date on which the territorial extension to the Union made subsequent to the international registration pursuant to Article 3ter(2) of the Madrid Protocol was recorded and, where applicable, the date of priority of the international registration.

3. The Register shall also contain the following entries, each accompanied by the date of recording of such entry:

(a)changes in the name, address or nationality of the proprietor of an EU trade mark or a change in the State in which he is domiciled or has his seat or establishment;

(b)changes in the name or business address of the representative, other than a representative as referred to in the first sentence of Article 92(3);

(c)where a new representative is appointed, the name and business address of that representative;

(d)amendments and alterations of the mark, pursuant to Articles 43 and 48, and corrections of errors;

(e)notice of amendments to the regulations governing the use of the collective mark pursuant to Article 71;

(f)particulars of claims of seniority of a registered earlier trade mark as referred to in Article 34, pursuant to Article 35;

(g)total or partial transfers pursuant to Article 17;

(h)creation or transfer of a right in rem pursuant to Article 19, and the nature of the right in rem;

(i)levy of execution pursuant to Article 20 and insolvency proceedings pursuant to Article 21;

(j)the grant or transfer of a licence pursuant to Article 22 and, where applicable, the type of licence;

(k)renewal of a registration pursuant to Article 47, the date from which it takes effect and any restrictions pursuant to Article 47(4);

(l)a record of a determination of the expiry of a registration pursuant to Article 47;

(m)declarations of withdrawal or surrender by the proprietor of the mark pursuant to Articles 43 and 50 respectively;

(n)the date of submission and the particulars of an opposition pursuant to Article 41, of an application pursuant to Article 56, or a counterclaim pursuant to Article 100(4) for revocation, or for a declaration of invalidity, or of an appeal pursuant to Article 60;

(o)the date and content of a decision on an opposition, on an application or counterclaim pursuant to Article 57(6) or the third sentence of Article 100(6), or on an appeal pursuant to Article 64;

(p)a record of the receipt of a request for conversion pursuant to Article 113(2);

(q)the cancellation of the representative recorded pursuant to point (e) of paragraph 2 of this Article;

(r)the cancellation of the seniority of a national mark;

(s)the modification to or cancellation from the Register of the items referred to in points (h), (i) and (j) of this paragraph;

(t)the replacement of the EU trade mark by an international registration pursuant to Article 157;

(u)the date and number of international registrations based on the EU trade mark application which has been registered as an EU trade mark pursuant to Article 148(1);

(v)the date and number of international registrations based on the EU trade mark pursuant to Article 148(2);

(w)the division of an application pursuant to Article 44 and the division of a registration pursuant to Article 49, together with the items referred to in paragraph 2 of this Article in respect of the divisional registration, as well as the list of goods and services of the original registration as amended;

(x)the revocation of a decision or an entry in the Register pursuant to Article 80, where the revocation concerns a decision or entry which has been published.

4. The Executive Director may determine that items other than those referred to in paragraphs 2 and 3 of this Article are to be entered in the Register, subject to Article 123(4).

5. The Register may be maintained in electronic form. The Office shall collect, organise, make public and store the items referred to in paragraphs 2 and 3, including any personal data, for the purposes laid down in paragraph 9. The Office shall keep the register easily accessible for public inspection.

6. The proprietor of an EU trade mark shall be notified of any change in the Register.

7. The Office shall provide certified or uncertified extracts from the Register on request and on payment of a fee.

8. The processing of the data concerning the entries set out in paragraphs 2 and 3, including any personal data, shall take place for the purposes of:

(a)administering the applications and/or registrations as described in this Regulation and acts adopted pursuant to it;

(b)maintaining a public register for inspection by, and the information of, public authorities and economic operators, in order to enable them to exercise the rights conferred on them by this Regulation and be informed about the existence of prior rights belonging to third parties; and

(c)producing reports and statistics enabling the Office to optimise its operations and improve the functioning of the system.

9. All the data, including personal data, concerning the entries in paragraphs 2 and 3 shall be considered to be of public interest and may be accessed by any third party. For reasons of legal certainty, the entries in the Register shall be kept for an indefinite period of time.

Database

1. In addition to the obligation to keep a Register within the meaning of Article 87, the Office shall collect and store in an electronic database all the particulars provided by applicants or any other party to the proceedings under this Regulation or acts adopted pursuant to it.

2. The electronic database may include personal data, beyond those included in the Register pursuant to Article 87, to the extent that such particulars are required by this Regulation or acts adopted pursuant to it. The collection, storage and processing of such data shall serve the purposes of:

(a)administering the applications and/or registrations as described in this Regulation and acts adopted pursuant to it;

(b)accessing the information necessary for conducting the relevant proceedings more easily and efficiently;

(c)communicating with the applicants and other parties to the proceedings;

(d)producing reports and statistics enabling the Office to optimise its operations and improve the functioning of the system.

3. The Executive Director shall determine the conditions of access to the electronic database and the manner in which its contents, other than the personal data referred to in paragraph 2 of this Article but including those listed in Article 87, may be made available in machine-readable form, including the charge for such access.

4. Access to the personal data referred to in paragraph 2 shall be restricted and such data shall not be made publicly available unless the party concerned has given his express consent.

5. All data shall be kept indefinitely. However, the party concerned may request the removal of any personal data from the database after 18 months from the expiry of the trade mark or the closure of the relevant inter partes procedure. The party concerned shall have the right to obtain the correction of inaccurate or erroneous data at any time.

Online access to decisions

1. The decisions of the Office shall be made available online for the information and consultation of the general public in the interest of transparency and predictability. Any party to the proceedings that led to the adoption of the decision may request the removal of any personal data included in the decision.

2. The Office may provide online access to judgments of national and Union courts related to its tasks in order to raise public awareness of intellectual property matters and promote convergence of practices. The Office shall respect the conditions of the initial publication with regard to personal data.

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Keeping of files

1. The Office shall keep the files of any procedure relating to an EU trade mark application or EU trade mark registration. The Executive Director shall determine the form in which those files shall be kept.

2. Where the files are kept in electronic format, the electronic files, or back-up copies thereof, shall be kept indefinitely. The original documents filed by parties to the proceedings, and forming the basis of such electronic files, shall be disposed of after a period following their reception by the Office, which shall be determined by the Executive Director.

3. Where and to the extent that files or parts of the files are kept in any form other than electronically, documents or items of evidence constituting part of such files shall be kept for at least five years from the end of the year in which the application is rejected or withdrawn or is deemed to be withdrawn, the registration of the EU trade mark expires completely pursuant to Article 47, the complete surrender of the EU trade mark is registered pursuant to Article 50, or the EU trade mark is completely removed from the Register pursuant to Article 57(6) or 100(6).

Periodical publications

4. The Commission shall adopt implementing acts specifying:

(a)the date to be taken as the date of publication in the European Union Trade Marks Bulletin;

(b)the manner of publication of entries regarding the registration of a trade mark which do not contain changes as compared to the publication of the application;

(c)the forms in which editions of the Official Journal of the Office may be made available to the public.

Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).

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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.

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 the second sentence of paragraph 3 of this Article, natural or legal persons having neither their domicile nor their principal place of business or a real and effective industrial or commercial establishment in the European Economic Area shall be represented before the Office in accordance with Article 93(1) in all proceedings provided for by this Regulation, other than the filing of an application for an EU trade mark.

3. Natural or legal persons having their domicile or principal place of business or a real and effective industrial or commercial establishment in the European Economic Area may be represented before the Office by an employee. 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 European Economic Area. Employees who represent persons, within the meaning of this paragraph, shall, at the request of the Office or, where appropriate, of the party to the proceedings, file with it a signed authorisation for insertion in the files.

4. Where there is more than one applicant or more than one third party acting in common, a common representative shall be appointed.

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Professional representatives

1. Representation of natural or legal persons before the Office may only be undertaken by:

(a)a legal practitioner qualified in one of the Member States of the European Economic Area and having his place of business within the European Economic Area, to the extent that he is entitled, within the said Member State, to act as a representative in trade mark matters;

(b)professional representatives whose names appear on the list maintained for this purpose by the Office.

Representatives acting before the Office shall, at the request of the Office or, where appropriate, of the other party to the proceedings, file with it a signed authorisation for insertion on the files.

2. Any natural person who fulfils the following conditions may be entered on the list of professional representatives:

(a)being a national of one of the Member States of the European Economic Area;

(b)having his place of business or employment in the European Economic Area;

(c)being entitled to represent natural or legal persons in trade mark matters before the Benelux Office for Intellectual Property or before the central industrial property office of a Member State of the European Economic Area. Where, in the State concerned, 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 Benelux Office for Intellectual Property or those central industrial property offices shall 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 Benelux Office for Intellectual Property or those central industrial property offices is officially recognised in accordance with the regulations laid down by the State concerned shall not be required to have exercised the profession.

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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 Executive Director may grant an exemption from:

(a)the requirement in the second sentence of paragraph 2(c), if the applicant furnishes proof that he has acquired the requisite qualification in another way;

(b)the requirement set out in paragraph 2(a) in the case of highly qualified professionals, provided that the requirements set out in paragraphs 2(b) and (c) are fulfilled.

5. A person may be removed from the list of professional representatives at his request or when no longer in a capacity to represent. The amendments of the list of professional representatives shall be published in the Official Journal of the Office.

Delegation of powers

The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying:

(a)the conditions and the procedure for the appointment of a common representative as referred to in Article 92(4);

(b)the conditions under which employees referred to in Article 92(3) and professional representatives referred to in Article 93(1) shall file with the Office a signed authorisation in order to undertake representation, and the content of that authorisation;

(c)the circumstances in which a person may be removed from the list of professional representatives referred to in Article 93(5).

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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.

Functions of the Management Board

1. Without prejudice to the functions attributed to the Budget Committee in Section 5, the Management Board shall have the following functions:

(a)on the basis of a draft submitted by the Executive Director in accordance with Article 128(4)(c), adopting the annual work programme of the Office for the coming year, taking into account the opinion of the Commission, and forwarding the adopted annual work programme to the European Parliament, to the Council and to the Commission;

(b)on the basis of a draft submitted by the Executive Director in accordance with Article 128(4)(e) and taking into account the opinion of the Commission, adopting a multiannual strategic programme for the Office, including the Office's strategy for international cooperation, following an exchange of views between the Executive Director and the relevant committee in the European Parliament, and forwarding the adopted multiannual strategic programme to the European Parliament, to the Council and to the Commission;

(c)on the basis of a draft submitted by the Executive Director in accordance with Article 128(4)(g), adopting the annual report and forwarding the adopted annual report to the European Parliament, to the Council, to the Commission and to the Court of Auditors;

(d)on the basis of a draft submitted by the Executive Director in accordance with Article 128(4)(h), adopting the multiannual staff policy plan;

(e)exercising the powers conferred on it under Article 123c(2);

(f)exercising the powers conferred on it under Article 139(5);

(g)adopting rules on the prevention and management of conflicts of interest in the Office;

(i)adopting appropriate implementing rules to give effect to the Staff Regulations and the Conditions of Employment of Other Servants in accordance with Article 110 of the Staff Regulations;

(j)drawing up the list of candidates provided for in Article 129(2);

(k)ensuring adequate follow-up to the findings and recommendations stemming from the internal or external audit reports and evaluations referred to in Article 165a, as well as from investigations of the European Anti-fraud Office (OLAF);

(l)being consulted before adoption of the guidelines for examination in the Office and in the other cases provided for in this Regulation;

(m)providing opinions and requests for information to the Executive Director and to the Commission where it considers it necessary.

2. The Management Board shall adopt, in accordance with Article 110 of the Staff Regulations and Article 142 of the Conditions of Employment of Other Servants, a decision based on Article 2(1) of the Staff Regulations and on Article 6 of the Conditions of Employment of Other Servants, delegating the relevant appointing authority powers to the Executive Director and defining the conditions under which that delegation of appointing authority powers can be suspended.

The Executive Director shall be authorised to sub-delegate those powers.

Where exceptional circumstances so require, the Management Board may, by way of a decision, temporarily suspend the delegation of the appointing authority powers to the Executive Director and those sub-delegated by the latter, and exercise them itself or delegate them to one of its members or to a staff member other than the Executive Director.

Composition of the Management Board

1. The Management Board shall be composed of one representative of each Member State, two representatives of the Commission and one representative of the European Parliament, and their respective alternates.

2. The members of the Management Board may, subject to its rules of procedure, be assisted by advisers or experts.

Chairperson of the Management Board

1. The Management Board shall elect a chairperson and a deputy chairperson from among its members. The deputy chairperson shall ex officio replace the chairperson in the event of his being prevented from attending to his duties.

2. The duration of the terms of office of the chairperson and the deputy chairperson shall be four years. The terms of office shall be renewable once. If, however, their membership of the Management Board ends at any time during their term of office, their term of office shall automatically expire on that date also.

Meetings

1. Meetings of the Management Board shall be convened by its chairperson.

2. The Executive Director shall take part in the deliberations, unless the Management Board decides otherwise.

3. The Management Board shall hold an ordinary meeting at least once a year. In addition, it shall meet on the initiative of its chairperson or at the request of the Commission or of one-third of the Member States.

4. The Management Board shall adopt rules of procedure.

5. The Management Board shall take its decisions by an absolute majority of its members. However, a majority of two-thirds of its members shall be required for the decisions which the Management Board is empowered to take under Article 124(1)(a) and (b), Article 126(1) and Article 129(2) and (4). In both cases each member shall have one vote.

6. The Management Board may invite observers to attend its meetings.

7. The secretariat for the Management Board shall be provided by the Office.

Functions of the Executive Director

1. The Office shall be managed by the Executive Director. The Executive Director shall be accountable to the Management Board.

2. Without prejudice to the powers of the Commission, the Management Board, and the Budget Committee, the Executive Director shall be independent in the performance of his duties and shall neither seek nor take instructions from a government or from any other body.

3. The Executive Director shall be the legal representative of the Office.

4. The Executive Director shall have in particular the following functions, which may be delegated:

(a)taking all necessary steps, including the adoption of internal administrative instructions and the publication of notices, to ensure the functioning of the Office;

(b)implementing the decisions adopted by the Management Board;

(c)preparing a draft annual work programme indicating estimated human and financial resources for each activity, and submitting it to the Management Board after consultation of the Commission;

(d)submitting to the Management Board proposals pursuant to Article 123c(2);

(e)preparing a draft multiannual strategic programme, including the Office's strategy for international cooperation, and submitting it to the Management Board after consultation of the Commission and following an exchange of views with the relevant committee in the European Parliament;

(f)implementing the annual work programme and the multiannual strategic programme and reporting to the Management Board on their implementation;

(g)preparing the annual report on the Office's activities and presenting it to the Management Board for approval;

(h)preparing a draft multiannual staff policy plan and submitting it to the Management Board after consultation of the Commission;

(i)preparing an action plan following-up on the conclusions of the internal or external audit reports and evaluations, as well as following up on the investigations of the OLAF, and reporting on progress twice a year to the Commission and to the Management Board;

(j)protecting the financial interests of the Union by the application of preventive measures against fraud, corruption and any other illegal activities, by effective checks and, if irregularities are detected, by recovering amounts wrongly paid and, where appropriate, by imposing effective, proportionate and dissuasive administrative and financial penalties;

(k)preparing an anti-fraud strategy for the Office and presenting it to the Budget Committee for approval;

(l)in order to ensure uniform application of the Regulation, referring, where appropriate, to the enlarged Board of Appeal (‘the Grand Board’) questions on a point of law, in particular if the Boards of Appeal have issued diverging decisions on the point;

(m)drawing up estimates of the revenue and expenditure of the Office and implementing the budget.

5. The Executive Director shall be assisted by one or more Deputy Executive Directors. If the Executive Director is absent or indisposed, the Deputy Executive Director or one of the Deputy Executive Directors shall replace him in accordance with the procedure laid down by the Management Board.

Appointment and removal of the Executive Director and extension of term of office

1. The Executive Director shall be engaged as a temporary agent of the Office under Article 2(a) of the Conditions of Employment of Other Servants.

2. The Executive Director shall be appointed by the Council by simple majority, from a list of candidates proposed by the Management Board, following an open and transparent selection procedure. Before being appointed, the candidate selected by the Management Board may be invited to make a statement before any competent European Parliament committee and to answer questions put by its members. For the purpose of concluding the contract with the Executive Director, the Office shall be represented by the chairperson of the Management Board.

The Executive Director may be removed from office only upon a decision of the Council acting on a proposal from the Management Board.

3. The term of office of the Executive Director shall be five years. By the end of that period, the Management Board shall undertake an assessment which takes into account an evaluation of the performance of the Executive Director and the Office's future tasks and challenges.

4. The Council, taking into account the assessment referred to in paragraph 3, may extend the term of office of the Executive Director once and for no more than five years.

5. An Executive Director whose term of office has been extended may not participate in another selection procedure for the same post at the end of his overall term of office.

6. The Deputy Executive Director or Deputy Executive Directors shall be appointed or removed from office as provided for in paragraph 2, after consultation of the Executive Director and, where applicable, the Executive Director-elect. The term of office of the Deputy Executive Director shall be five years. It may be extended once and for no more than five years by the Council, after consultation of the Executive Director.

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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)a department in charge of the Register;

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(d)Cancellation Divisions;

(e)Boards of Appeal;

(f)any other unit or person appointed by the Executive Director to that effect.

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Department in charge of the Register

1. The Department in charge of the Register shall be responsible for taking decisions in respect of entries in the Register.

2. It shall also be responsible for keeping the list of professional representatives referred to in Article 93(2).

3. The decisions of the Department shall be taken by a single member.

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General Competence

Decisions required under this Regulation which do not fall within the competence of an examiner, an Opposition Division, a Cancellation Division or the Department in charge of the Register, shall be taken by any official or unit appointed by the Executive Director for that purpose.

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Independence of the members of the Boards of Appeal

1. The President of the Boards of Appeal and the chairpersons of the Boards shall be appointed, in accordance with the procedure laid down in Article 129 for the appointment of the Executive Director, for a term of five years. They shall 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 institution which appointed them, takes a decision to this effect.

2. The term of office of the President of the Boards of Appeal may be extended once for one additional five-year period, or until retirement age if this age is reached during the new term of office, after a prior positive evaluation of his performance by the Management Board.

3. The term of office of the chairpersons of the Boards may be extended for additional five-year periods, or until retirement age if this age is reached during the new term of office, after a prior positive evaluation of their performance by the Management Board, and after consulting the President of the Boards of Appeal.

4. The President of the Boards of Appeal shall have the following managerial and organisational functions:

(a)chairing the Presidium of the Boards of Appeal (‘the Presidium’), responsible for laying down the rules and organising the work of the Boards;

(b)ensuring the implementation of the decisions of the Presidium;

(c)allocating cases to a Board on the basis of objective criteria determined by the Presidium;

(d)forwarding to the Executive Director the Boards' expenditure requirements, with a view to drawing up the expenditure estimates.

The President of the Boards of Appeal shall chair the Grand Board.

5. The members of the Boards of Appeal shall be appointed by the Management Board for a term of five years. Their term of office may be extended for additional five-year periods, or until retirement age if that age is reached during the new term of office after a prior positive evaluation of their performance by the Management Board, and after consulting the President of the Boards of Appeal.

6. The members of the Boards of Appeal shall not be removed from office unless there are serious grounds for such removal and the Court of Justice, after the case has been referred to it by the Management Board on the recommendation of the President of the Boards of Appeal, and after consulting the chairperson of the Board to which the member concerned belongs, takes a decision to this effect.

7. The President of the Boards of Appeal and the chairpersons and members of the Boards of Appeal shall be independent. In their decisions, they shall not be bound by any instructions.

8. Decisions taken by the Grand Board on appeals or opinions on questions of law referred to it by the Executive Director pursuant to Article 135 shall be binding on the decision-making instances of the Office referred to in Article 130.

9. The President of the Boards of Appeal and the chairpersons and members of the Boards of Appeal shall not be examiners or members of the Opposition Divisions, the Department in charge of the Register or Cancellation Divisions.

Presidium of the Boards of Appeal and Grand Board

1. The Presidium shall comprise the President of the Boards of Appeal, who shall chair it, the chairmen of the Boards and Board members elected for each calendar year by and from among all the members of the Boards other than the President of the Boards of Appeal and the chairmen of the Boards. The number of Board members so elected shall constitute a quarter of the number of Board members, other than the President of the Boards of Appeal and the chairmen of the Boards, and that number shall be rounded up if necessary.

2. The Grand Board referred to in Article 135(2) shall comprise nine members, including the President of the Boards of Appeal, the chairmen of the Boards, the rapporteur designated prior to referral to the Grand Board, if applicable, and members drawn in rotation from a list comprising the names of all members of the Boards of Appeal other than the President of the Boards of Appeal and the chairmen of the Boards.

Delegation of powers

The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the details concerning the organisation of the Boards of Appeal, including the setting up and the role of the Presidium, the composition of the Grand Board and the rules on referrals to it, and the conditions under which decisions are to be taken by a single member in accordance with Article 135(2) and (5).

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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 they 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.

Mediation centre

1. For the purposes of Article 123b(3), the Office may establish a Mediation Centre (‘the Centre’).

2. Any natural or legal person may use the Centre's services on a voluntary basis with the aim of reaching a friendly settlement of disputes, based on this Regulation or Regulation (EC) No 6/2002, by mutual agreement.

3. The parties shall have recourse to mediation by means of a joint request. The request shall not be deemed to have been filed until the corresponding charge has been paid. The Executive Director shall fix the amount to be charged in accordance with Article 144(1).

4. In the case of disputes subject to the proceedings pending before the Opposition Divisions, Cancellation Divisions or before the Boards of Appeal of the Office a joint request for mediation may be presented at any time after the lodging of a notice of opposition, an application for revocation or an application for a declaration of invalidity or a notice of appeal against decisions of the Opposition or Cancellation Divisions.

5. The proceedings in question shall be suspended and the time periods, other than the time periods for the payment of the applicable fee, shall be interrupted as from the date of the filing of a joint request for mediation. The time periods shall continue as from the day on which the proceedings are resumed.

6. The parties shall be invited to jointly appoint, from the list referred to in paragraph 12, a mediator who has declared that he has a command of the language of the mediation in question. Where the parties do not appoint a mediator within 20 days of the invitation to do so, the mediation shall be deemed to have failed.

7. The parties shall agree together with the mediator on the detailed arrangements for the mediation in a mediation agreement.

8. The mediator shall conclude the mediation proceedings as soon as the parties reach a settlement agreement, or one of the parties declares that it wishes to end the mediation or the mediator establishes that the parties have failed to reach such an agreement.

9. The mediator shall inform the parties as well as the relevant instance of the Office as soon as the mediation proceedings have been concluded.

10. The discussions and negotiations conducted within the framework of mediation shall be confidential for all persons involved in the mediation, in particular for the mediator, the parties and their representatives. All documents and information submitted during the mediation shall be kept separately from, and shall not be part of, the file of any other proceedings before the Office.

11. The mediation shall be conducted in one of the official languages of the Union to be agreed upon by the parties. Where the mediation relates to disputes pending before the Office, the mediation shall be conducted in the language of the Office proceedings, unless otherwise agreed by the parties.

12. The Office shall establish a list of mediators who shall support parties in resolving disputes. The mediators shall be independent and possess relevant skills and experience. The list may include mediators who are employed by the Office, and mediators who are not so employed.

13. Mediators shall be impartial in the exercise of their duties and shall declare any real or perceived conflict of interest upon their designation. Members of the decision-making instances of the Office listed in Article 130 shall not take part in mediation concerning a case in which they have:

(a)had any prior involvement in the proceedings referred to mediation;

(b)any personal interest in those proceedings; or

(c)been previously involved as a representative of one of the parties.

14. Mediators shall not take part as members of the decision-making instances of the Office listed in Article 130 in proceedings resumed as a consequence of a mediation failure.

15. The Office may cooperate with other recognised national or international bodies dealing with mediation.

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Budget Committee

1. The Budget Committee shall have the functions assigned to it in this Section.

2. Articles 125 and 126, Article 127(1) to (4), and (5), in so far as it relates to the election of the chairperson and deputy chairperson, (6) and (7) shall apply to the Budget Committee, mutatis mutandis.

3. The Budget Committee shall take its decisions by an absolute majority of its members. However, a majority of two-thirds of its members shall be required for the decisions which the Budget Committee is empowered to take under Article 140(3) and Article 143. In both cases each member shall have one vote.

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. Each financial year shall correspond to 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 Annex -I to this Regulation, total fees as provided for in Regulation (EC) No 6/2002, total fees payable, under the Madrid Protocol referred to in Article 145 of this Regulation, for an international registration designating the Union and other payments made to Contracting Parties to the Madrid Protocol, total fees payable, under the Geneva Act referred to in Article 106c of Regulation (EC) No 6/2002, for an international registration designating the Union and other payments made to Contracting Parties to the Geneva Act, and, to the extent necessary, a subsidy entered against a specific heading of the Commission section of the general budget of the Union.

4. Every year the Office shall offset the costs incurred by the central industrial property offices of the Member States, by the Benelux Office for Intellectual Property and by any other relevant authority to be nominated by a Member State, as the result of the specific tasks which they carry out as functional parts of the EU trade mark system in the context of the following services and procedures:

(a)opposition and invalidity proceedings before the central industrial property offices of the Member States and the Benelux Office for Intellectual Property involving EU trade marks;

(b)provision of information on the functioning of the EU trade mark system through helpdesks and information centres;

(c)enforcement of EU trade marks, including action taken pursuant to Article 9(4).

5. The overall offsetting of the costs identified in paragraph 4 shall correspond to 5 % of the yearly revenue of the Office. Without prejudice to the third subparagraph of this paragraph, on a proposal by the Office and after having consulted the Budget Committee, the Management Board shall determine the distribution key on the basis of the following fair, equitable and relevant indicators:

(a)the annual number of EU trade mark applications originating from applicants in each Member State;

(b)the annual number of national trade mark applications in each Member State;

(c)the annual number of oppositions and applications for a declaration of invalidity submitted by proprietors of EU trade marks in each Member State;

(d)the annual number of cases brought before the EU trade mark courts designated by each Member State in accordance with Article 95.

For the purpose of substantiating the costs referred to in paragraph 4, Member States shall submit to the Office by 31 March of each year, statistical data demonstrating the figures referred to in points (a) to (d) of the first subparagraph of this paragraph for the preceding year, which shall be included in the proposal to be made to the Management Board.

On grounds of equity, the costs incurred by the bodies referred to in paragraph 4 in each Member State shall be deemed to correspond to at least 2 % of the total offsetting provided for under this paragraph.

6. The obligation by the Office to offset the costs referred to in paragraph 4 and incurred in a given year shall only apply to the extent that no budgetary deficit occurs in that year.

7. In the event of a budgetary surplus, and without prejudice to paragraph 10, on a proposal by the Office and after having consulted the Budget Committee, the Management Board may increase the percentage laid down in paragraph 5 to a maximum of 10 % of the yearly revenue of the Office.

8. Without prejudice to paragraphs 4 to 7 and paragraph 10 of this Article and to Articles 123b and 123c, where a substantive surplus is generated over five consecutive years, the Budget Committee, upon a proposal from the Office and in accordance with the annual work programme and multiannual strategic programme referred to in Article 124(1)(a) and (b), shall decide by a two-thirds majority on the transfer to the budget of the Union of a surplus generated from 23 March 2016.

9. The Office shall prepare on a biannual basis a report for the European Parliament, the Council and the Commission on its financial situation, including on the financial operations performed under Article 123c(5) and (6), and Article 139(5) and (7). On the basis of that report, the Commission shall review the financial situation of the Office.

10. The Office shall provide for a reserve fund covering one year of its operational expenditure to ensure the continuity of its operations and the execution of its tasks.

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Fees and charges and due date

1. The Executive Director shall lay down the amount to be charged for any services rendered by the Office other than those set out in Annex -I, as well as the amount to be charged for the European Union Trade Marks Bulletin, the Official Journal of the Office and any other publications issued by the Office. The amounts of charges shall be set in euros and shall be published in the Official Journal of the Office. The amount of each charge shall not exceed what is necessary to cover the costs of the specific service rendered by the Office.

2. Fees and charges in respect of which the due date is not specified in this Regulation shall be due on the date of receipt of the request for the service for which the fee or the charge is incurred.

With the consent of the Budget Committee, the Executive Director may determine which of the services mentioned in the first subparagraph are not to be dependent upon the advance payment of the corresponding fees or charges.

Payment of fees and charges

1. Fees and charges due to the Office shall be paid by payment or transfer to a bank account held by the Office.

With the consent of the Budget Committee, the Executive Director may establish which specific methods of payment other than those set out in the first subparagraph, in particular by means of deposits in current accounts held with the Office, may be used.

Determinations made pursuant to the second subparagraph shall be published in the Official Journal of the Office.

All payments, including by any other method of payment established pursuant to the second subparagraph, shall be made in euros.

2. Every payment shall indicate the name of the person making the payment and shall contain the necessary information to enable the Office to establish immediately the purpose of the payment. In particular, the following information shall be provided:

(a)when the application fee is paid, the purpose of the payment, namely ‘application fee’;

(b)when the opposition fee is paid, the file number of the application and the name of the applicant for the EU trade mark against which opposition is entered, and the purpose of the payment, namely ‘opposition fee’;

(c)when the revocation fee and the invalidity fee are paid, the registration number and the name of the proprietor of the EU trade mark against which the application is directed, and the purpose of the payment, namely ‘revocation fee’ or ‘invalidity fee’.

3. If the purpose of the payment referred to in paragraph 2 cannot immediately be established, the Office shall require the person making the payment to notify it in writing of this purpose within such period as it may specify. If the person does not comply with this request in due time, the payment shall be considered not to have been made. The amount which has been paid shall be refunded.

Deemed date of payment

1. In the cases referred to in the first subparagraph of Article 144a(1), the date on which the payment shall be considered to have been made to the Office shall be the date on which the amount of the payment or of the transfer is actually entered in a bank account held by the Office.

2. Where the methods of payment referred to in the second subparagraph of Article 144a(1) may be used, the Executive Director shall establish the date on which such payments are to be considered to have been made.

3. Where, under paragraphs 1 and 2, payment of a fee is not considered to have been made until after the expiry of the period in which it was due, it shall be considered that this period has been observed if evidence is provided to the Office that the persons who made the payment in a Member State, within the period within which the payment should have been made, duly gave an order to a banking establishment to transfer the amount of the payment, and paid a surcharge of 10 % of the relevant fee or fees, but not exceeding EUR 200. No surcharge shall be payable if the relevant order to the banking establishment has been given not later than 10 days before the expiry of the period for payment.

4. The Office may request the person who made the payment to produce evidence as to the date on which the order to the banking establishment as referred to in paragraph 3 was given and, where required, to pay the relevant surcharge within a period to be specified by it. If the person fails to comply with that request or if the evidence is insufficient, or if the required surcharge is not paid in due time, the period for payment shall be considered not to have been observed.

Insufficient payments and refund of insignificant amounts

1. A time limit for payment shall, in principle, be considered to have been observed only if the full amount of the fee has been paid in due time. If the fee is not paid in full, the amount which has been paid shall be refunded after the period for payment has expired.

2. The Office may, however, in so far as is possible within the time remaining before the end of the period, give the person making the payment the opportunity to pay the amount lacking or, where this is considered justified, overlook any small amounts lacking, without prejudice to the rights of the person making the payment.

3. With the consent of the Budget Committee, the Executive Director may waive action for the enforced recovery of any sum due where the sum to be recovered is minimal or where such recovery is too uncertain.

4. Where an excessive sum is paid to cover a fee or a charge, the excess shall not be refunded if the amount is insignificant and the party concerned has not expressly requested a refund.

With the consent of the Budget Committee the Executive Director may determine the amount below which an excessive sum paid to cover a fee or a charge shall not be refunded.

Determinations pursuant to the second subparagraph shall be published in the Official Journal of the Office.

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Notification of the invalidity of the basic application or registration

2. The Commission shall adopt implementing acts specifying the individual facts and decisions subject to the notification obligation in accordance with Article 6(3) of the Madrid Protocol as well as the relevant point in time of such notifications. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2) of this Regulation.

Request for territorial extension subsequent to international registration

2. The Commission shall adopt implementing acts specifying the detailed requirements regarding the request for territorial extension pursuant to paragraph 1 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).

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International fees

Any fees payable to the International Bureau under the Madrid Protocol shall be paid direct to the International Bureau.

Seniority claimed before the Office

6. The Commission shall adopt implementing acts specifying the details to be contained in a seniority claim under paragraph 1 of this Article and the details of the information to be notified pursuant to paragraph 5 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).

Designation of goods and services and examination as to absolute grounds for refusal

1. International registrations designating the Union shall be subject to examination as to their conformity with Article 28(2) to (4) and to absolute grounds for refusal in the same way as applications for EU trade marks.

2. Where an international registration designating the Union is found to be ineligible for protection pursuant to Article 28(4) or Article 37(1) of this Regulation for all or any part of the goods and services for which it has been registered by the International Bureau, the Office shall issue an ex officio provisional notification of refusal to the International Bureau, in accordance with Article 5(1) and (2) of the Madrid Protocol.

3. Where the holder of an international registration is obliged to be represented before the Office pursuant to Article 92(2), the notification referred to in paragraph 2 of this Article shall contain an invitation to appoint a representative within the meaning of Article 93(1).

4. The notification of provisional refusal shall state the reasons on which it is based, and shall specify a time period by which the holder of the international registration may submit his observations and, if appropriate, shall appoint a representative. The time period shall start on the day on which the Office issues the provisional refusal.

5. Where the Office finds that the international application designating the Union does not contain the indication of a second language pursuant to Article 161b of this Regulation, the Office shall issue an ex officio provisional notification of refusal to the International Bureau pursuant to Article 5(1) and (2) of the Madrid Protocol.

6. Where the holder of an international registration fails to overcome the ground for refusing protection within the time limit or, if appropriate, to appoint a representative or to indicate a second language, the Office shall refuse the protection in whole or for part of the goods and services for which the international registration is registered. The refusal of protection shall take the place of a refusal of an EU trade mark application. The decision shall be subject to appeal in accordance with Articles 58 to 65.

7. Where, as of the start of the opposition period referred to in Article 156(2), the Office has not issued an ex officio provisional notification of refusal pursuant to paragraph 2 of this Article, it shall send a statement to the International Bureau, indicating that the examination of absolute grounds of refusal pursuant to Article 37 has been completed but that the international registration is still subject to oppositions or observations of third parties. This interim statement shall be without prejudice to the right of the Office to re-open the examination of absolute grounds on its own initiative any time before the final statement of grant of protection has been issued.

8. The Commission shall adopt implementing acts specifying the details to be contained in the notification of ex officio provisional refusal of protection to be sent to the International Bureau and in the final communications to be sent to the International Bureau on the final grant or refusal of protection. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).

Collective and certification marks

3. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the details of the procedure concerning international registrations based on a basic application or basic registration relating to a collective mark, certification mark or guarantee mark.

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