LegalizeCommission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430
COMMISSION DELEGATED REGULATION (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430
THE EUROPEAN COMMISSION,
Having regard to the Treaty on the Functioning of the European Union,
Having regard to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (1), and in particular Article 48, Article 49(3), Article 65, Article 73, Article 96(4), Article 97(6), Article 98(5), Article 100(2), Article 101(5), Article 103(3), Article 106(3), Article 121, Article 168, Article 194(3) and Article 196(4) thereof,
Whereas:
(1) Council Regulation (EC) No 40/94 (2), which was codified as Council Regulation (EC) No 207/2009 (3), created a system specific to the Union for the protection of trade marks to be obtained at the level of the Union on the basis of an application to the European Union Intellectual Property Office (‘the Office’).
(2) Regulation (EU) 2015/2424 of the European Parliament and of the Council (4) amending Regulation (EC) No 207/2009 aligned the powers conferred therein upon the Commission with Articles 290 and 291 of the Treaty on the Functioning of the European Union. In order to conform with the new legal framework resulting from that alignment, Commission Delegated Regulation (EU) 2017/1430 (5) and Commission Implementing Regulation (EU) 2017/1431 (6) were adopted.
(3) Regulation (EC) No 207/2009 was codified as Regulation (EU) 2017/1001. For reasons of clarity and simplification, the references contained in a Delegated Regulation should reflect the renumbering of articles resulting from such a codification of the relevant basic act. Delegated Regulation (EU) 2017/1430 should therefore be repealed and the provisions of that Delegated Regulation should be laid down, with updated references to Regulation (EU) 2017/1001, in this Regulation.
(4) The procedural rules on opposition should ensure an effective, efficient and expeditious examination and registration of EU trade mark applications by the Office using a procedure which is transparent, thorough, fair and equitable. In order to enhance legal certainty and clarity, those opposition rules should take account of the extended relative grounds for refusal laid down in Regulation (EU) 2017/1001, in particular as regards the requirements for admissibility and substantiation of opposition proceedings, and be adjusted to better reflect the case-law of the Court of Justice of the European Union and to codify the practice of the Office.
(5) In order to allow for a more flexible, consistent and modern trade mark system in the Union, while ensuring legal certainty, it is appropriate to reduce the administrative burden for the parties in inter partes proceedings by relaxing the requirements for the substantiation of earlier rights in cases where the content of the relevant evidence is accessible online from a source recognised by the Office, as well as the requirement of submitting evidence in the language of the proceedings.
(6) In the interest of clarity and legal certainty, it is important to specify the requirements for amending an application for an EU trade mark in a clear and exhaustive manner.
(7) The procedural rules governing the revocation and declaration of invalidity of an EU trade mark should ensure that an EU trade mark can be revoked or declared invalid in an effective and efficient way by means of transparent, thorough, fair and equitable procedures. For the sake of greater clarity, consistency as well as efficiency and legal certainty, the procedural rules governing the revocation and declaration of invalidity of an EU trade mark should be aligned with those applicable to opposition proceedings, retaining only those differences which are required due to the specific nature of revocation and declaration of invalidity proceedings. Furthermore, requests for assignment of an EU trade mark registered in the name of an unauthorised agent should follow the same procedural path as invalidity proceedings, serving in practice as an alternative to invalidating the mark.
(8) According to settled case-law of the Court of Justice (7), unless otherwise provided, the Office enjoys discretionary powers when examining belated evidence, submitted for the purpose of either substantiating an opposition or proving genuine use of the earlier mark in the context of opposition or invalidity proceedings. In order to ensure legal certainty the relevant boundaries of such discretion should be accurately reflected in the rules governing opposition proceedings or proceedings for the declaration of invalidity of EU trade marks.
(9) In order to allow for an effective, efficient and, within the scope of the appeal defined by the parties, complete review of decisions taken by the Office in the first instance by means of a transparent, thorough, fair and impartial appeal procedure suited to the specific nature of intellectual property law and taking into account the principles laid down in Regulation (EU) 2017/1001, it is appropriate to reinforce legal certainty and predictability by clarifying and specifying the procedural rules and the parties' procedural guarantees, in particular where a defendant makes use of the right to file a cross appeal.
(10) In order to ensure an effective and efficient organisation of the Boards of Appeal, the President, the chairpersons and the members of the Boards of Appeal should, in the exercise of their respective functions conferred upon them by Regulation (EU) 2017/1001 and by this Regulation, be required to ensure a high quality and consistency of the decisions taken independently by the Boards on appeal as well as the efficiency of the appeal proceedings.
(11) In order to ensure the independence of the President, the chairpersons and the members of the Boards of Appeal as provided in Article 166 of Regulation (EU) 2017/1001, the Management Board should take the latter Article into account when adopting appropriate implementing rules to give effect to the Staff Regulations and the Conditions of Employment of Other Servants in accordance with Article 110 of the Staff Regulations.
(12) In order to enhance the transparency and predictability of the appeal proceedings, the rules of procedure of the Boards of Appeal originally laid down in Commission Regulation (EC) No 2868/95 (8) and Commission Regulation (EC) No 216/96 (9), should be set out in a single text and properly interlinked with the procedural rules applicable to the instances of the Office whose decisions are subject to appeals.
(13) For the sake of clarity and legal certainty, it is required to codify and clarify certain procedural rules governing oral proceedings, in particular relating to the language of such proceedings. It is further appropriate to provide greater efficiency and flexibility by introducing the possibility of taking part in oral proceedings by technical means and of substituting the minutes of oral proceedings by their recording.
(14) In order to further streamline proceedings and render them more consistent, it is appropriate to set out the basic structure and format of evidence to be submitted to the Office in all proceedings, as well as the consequences of not submitting evidence in accordance with that structure and format.
(15) In order to modernise the trade mark system in the Union by adapting it to the internet era, it is further appropriate to provide for a definition of ‘electronic means’ in the context of notifications and for forms of notification that are not obsolete.
(16) In the interest of efficiency, transparency and user-friendliness, the Office should make available standard forms in all the official languages of the Office for communication in proceedings before the Office, which may be completed online.
(17) For the purposes of greater clarity, consistency and efficiency, a provision on the suspension of opposition, revocation, invalidity and appeal proceedings should be introduced, laying down also the maximum duration of a suspension requested by both parties.
(18) The rules governing the calculation and duration of time limits, the procedures for the revocation of a decision or for cancellation of an entry in the Register, the detailed arrangements for the resumption of proceedings, and the details on representation before the Office need to ensure a smooth, effective and efficient operation of the EU trade mark system.
(19) It is necessary to ensure the effective and efficient registration of international trade marks in a manner that is fully consistent with the rules of the Protocol relating to the Madrid Agreement concerning the international registration of marks.
(20) Implementing Regulation (EU) 2017/1431 and Delegated Regulation (EU) 2017/1430 replaced the rules previously laid down in Regulations (EC) No 2868/95 and (EC) No 216/96 which were therefore repealed. Notwithstanding that repeal, it is necessary to continue to apply specific provisions of Regulations (EC) No 2868/95 and (EC) No 216/96 to certain proceedings that had been initiated before the date of applicability of Regulation (EU) 2017/1430 until the conclusion of those proceedings,
HAS ADOPTED THIS REGULATION:
TITLE I
GENERAL PROVISIONS
Article 1
Subject matter
This Regulation lays down rules specifying:
(a) the details of the procedure for filing and examining an opposition to the registration of an EU trade mark at the European Union Intellectual Property Office (‘the Office’);
(b) the details of the procedure governing the amendment of an application for an EU trade mark;
(c) the details governing the revocation and declaration of invalidity of an EU trade mark, as well as the transfer of an EU trade mark registered in the name of an unauthorised agent;
(d) the formal content of a notice of appeal and the procedure for the filing and the examination of an appeal, the formal content and form of the Boards of Appeal's decisions and the reimbursement of the appeal fee, the details concerning the organisation of the Boards of Appeal, and the conditions under which decisions on appeals are to be taken by a single member;
(e) the detailed arrangements for oral proceedings and for the taking of evidence;
(f) the detailed arrangements for notification by the Office and the rules on the means of communication with the Office;
(g) the details regarding the calculation and duration of time limits;
(h) the procedure for the revocation of a decision or for the cancellation of an entry in the Register of EU trade marks;
(i) the detailed arrangements for the resumption of proceedings before the Office;
(j) the conditions and the procedure for the appointment of a common representative, the conditions under which employees and professional representatives shall file an authorisation, and the content of that authorisation, and the circumstances in which a person may be removed from the list of admitted professional representatives;
(k) 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, and the procedure for the filing and examination of an opposition to an international registration.
TITLE II
PROCEDURE FOR OPPOSITION AND PROOF OF USE
Article 2
Notice of opposition
A notice of opposition may be entered on the basis of one or more earlier marks or other rights within the meaning of Article 8 of Regulation (EU) 2017/1001, provided that the proprietors or authorised persons entering the notice pursuant to Article 46 of Regulation (EU) 2017/1001 are entitled to do so for all the earlier marks or rights. Where an earlier mark has more than one proprietor (‘co-ownership’) or where an earlier right may be exercised by more than one person, an opposition pursuant to Article 46 of Regulation (EU) 2017/1001 may be filed by any or all of the proprietors or authorised persons.
The notice of opposition shall contain:
(a) the file number of the application against which opposition is entered and the name of the applicant for the EU trade mark;
(c) the grounds on which the opposition is based by means of a statement to the effect that the requirements under Article 8(1), (3), (4), (5) or (6) of Regulation (EU) 2017/1001 in respect of each of the earlier marks or rights invoked by the opposing party are fulfilled;
(d) in the case of an earlier trade mark application or registration, the filing date and, where available, the registration date and the priority date of the earlier mark;
(e) in the case of earlier rights pursuant to Article 8(6) of Regulation (EU) 2017/1001, the date of application for registration or, if that date is not available, the date from which protection is granted;
(f) in the case of an earlier trade mark application or registration, a representation of the earlier mark as registered or applied for; if the earlier mark is in colour, the representation shall be in colour;
(g) an indication of the goods or services on which each of the grounds of the opposition is based;
(i) an indication of the goods or services against which the opposition is directed; in the absence of such an indication, the opposition shall be considered to be directed against all of the goods or services of the opposed EU trade mark application.
Where the opposition is based on more than one earlier mark or earlier right, paragraph 2 shall apply for each of those marks, signs, designations of origin or geographical indications.
The notice of opposition may also contain a reasoned statement on the grounds, the facts and arguments on which the opposition relies, and supporting evidence.
Article 3
Use of languages in opposition proceedings
The opposing party or the applicant may, before the date on which the adversarial part of the opposition proceedings is deemed to commence pursuant to Article 6(1), inform the Office that the applicant and the opposing party have agreed on a different language for the opposition proceedings pursuant to Article 146(8) of Regulation (EU) 2017/1001. Where the notice of opposition has not been filed in that language, the applicant may request that the opposing party file a translation in that language. Such a request must be received by the Office not later than the date on which the adversarial part of the opposition proceedings is deemed to commence. The Office shall specify a time limit for the opposing party to file a translation. Where that translation is not filed or filed late, the language of the proceedings as determined in accordance with Article 146 of Regulation (EU) 2017/1001 (‘language of proceedings’) shall remain unchanged.
Article 4
Information to the parties to opposition proceedings
The notice of opposition and any document submitted by the opposing party, as well as any communication addressed to one of the parties by the Office prior to the finding on admissibility shall be sent by the Office to the other party for purposes of informing of the introduction of an opposition.
Article 5
Admissibility of the opposition
Where the opposition fee has not been paid within the opposition period laid down in Article 46(1) of Regulation (EU) 2017/1001, the opposition shall be deemed not to have been entered. Where the opposition fee has been paid after the expiry of the opposition period, it shall be refunded to the opposing party.
Where the notice of opposition has been filed after the expiry of the opposition period, the Office shall reject the opposition as inadmissible.
Where the notice of opposition has been filed in a language which is not one of the languages of the Office as required under Article 146(5) of Regulation (EU) 2017/1001, or where it does not comply with Article 2(2)(a), (b) or (c) of this Regulation, and where those deficiencies have not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.
Where the opposing party does not submit a translation as required under Article 146(7) of Regulation (EU) 2017/1001, the opposition shall be rejected as inadmissible. Where the opposing party submits an incomplete translation, the part of the notice of opposition that has not been translated shall not be taken into account in the examination of admissibility.
Where the notice of opposition does not comply with the provisions of Article 2(2)(d) to (h), the Office shall inform the opposing party accordingly and shall invite it to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before the time limit expires, the Office shall reject the opposition as inadmissible.
The Office shall notify the applicant of any finding pursuant to paragraph 1 that the notice of opposition is deemed not to have been entered and of any decision to reject the opposition on the grounds of inadmissibility under paragraphs 2, 3, 4 or 5. Where an opposition is rejected in its entirety as inadmissible pursuant to paragraphs 2, 3, 4 or 5, prior to the notification of Article 6(1), no decision on costs shall be taken.
Article 6
Commencement of the adversarial part of the opposition proceedings and prior closure of the proceedings
Where the opposition is found admissible pursuant to Article 5, the Office shall send a communication to the parties informing them that the adversarial part of the opposition proceedings shall be deemed to commence two months after receipt of the communication. That period may be extended to a total of 24 months if both parties request an extension before the two-month period expires.
Where, within the period referred to in paragraph 1, the application is withdrawn or restricted to goods or services against which the opposition is not directed, or the Office is informed about a settlement between the parties, or the application is rejected in parallel proceedings, the opposition proceedings shall be closed.
Where, within the period referred to in paragraph 1, the applicant restricts the application by deleting some of the goods or services against which the opposition is directed, the Office shall invite the opposing party to state, within such a period as it may specify, whether it maintains the opposition, and if so, against which of the remaining goods or services. Where the opposing party withdraws the opposition in light of the restriction, the opposition proceedings shall be closed.
Where, before the expiry of the period referred to in paragraph 1, the opposition proceedings are closed pursuant to paragraphs 2 or 3, no decision on costs shall be taken.
Where, before the expiry of the period referred to in paragraph 1, the opposition proceedings are closed following a withdrawal or restriction of the application pursuant to paragraph 2 or following a withdrawal of the opposition pursuant to paragraph 3, the opposition fee shall be refunded.
Article 7
Substantiation of the opposition
The Office shall give the opposing party the opportunity to submit the facts, evidence and arguments in support of the opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Article 2(4). For that purpose, the Office shall specify a time limit which shall be at least two months, starting on the date on which the adversarial part of the opposition proceedings is deemed to commence in accordance with Article 6(1).
Within the period referred to in paragraph 1, the opposing party shall also file evidence of the existence, validity and scope of protection of its earlier mark or right, as well as evidence proving its entitlement to file the opposition. In particular, the opposing party shall provide the following evidence:
(b) where the opposition is based on a well-known mark within the meaning of Article 8(2)(c) of Regulation (EU) 2017/1001, evidence showing that that mark is well known in the relevant territory for the goods or services indicated in accordance with Article 2(2)(g) of this Regulation;
(c) where the opposition is based on the absence of the proprietor's consent as referred to in Article 8(3) of Regulation (EU) 2017/1001, evidence of the opposing party's proprietorship of the prior trade mark and of its relationship with the agent or representative;
(d) where the opposition is based on an earlier right within the meaning of Article 8(4) of Regulation (EU) 2017/1001, evidence showing use of that right in the course of trade of more than mere local significance, as well as evidence of its acquisition, continued existence and scope of protection including, where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence;
(e) where the opposition is based on an earlier designation of origin or geographical indication within the meaning of Article 8(6) of Regulation (EU) 2017/1001, evidence of its acquisition, continued existence and scope of protection including, where the earlier designation of origin or geographical indication is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence;
(f) if the opposition is based on a mark with a reputation within the meaning of Article 8(5) of Regulation (EU) 2017/1001, in addition to the evidence referred to in point (a) of this paragraph, evidence showing that the mark has a reputation in the Union or in the Member State concerned for the goods or services indicated in accordance with Article 2(2)(g) of this Regulation, as well as evidence or arguments showing that 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.
Where the evidence concerning the filing or registration of the earlier rights referred to in paragraph 2(a) or, where applicable, paragraph 2(d) or (e), or the evidence concerning the content of the relevant national law, is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source.
Any filing, registration or renewal certificates or equivalent documents referred to in paragraph 2(a), (d) or (e), as well as any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in paragraph 2(d) and (e), including evidence accessible online as referred to in paragraph 3, shall be in the language of the proceedings or shall be accompanied by a translation into that language. The translation shall be submitted by the opposing party of its own motion within the time limit specified for submitting the original document. Any other evidence submitted by the opposing party to substantiate the opposition shall be subject to Article 24 of Implementing Regulation (EU) 2018/626. Translations submitted after the expiry of the relevant time limits shall not be taken into account.
The Office shall not take into account written submissions, or parts thereof, which have not been submitted in or not been translated into the language of the proceedings within the time limit set by the Office in accordance with paragraph 1.
Article 8
Examination of the opposition
Where, until the expiry of the period referred to in Article 7(1), the opposing party has not provided any evidence, or where the evidence provided is manifestly irrelevant or manifestly insufficient to meet the requirements laid down in Article 7(2) for any of the earlier rights, the opposition shall be rejected as unfounded.
Where the opposition is not rejected pursuant to paragraph 1, the Office shall communicate the submission of the opposing party to the applicant and shall invite it to file its observations within a period specified by the Office.
Where the applicant submits no observations, the Office shall base its ruling on the opposition on the evidence before it.
The observations submitted by the applicant shall be communicated to the opposing party who shall be invited, if the Office considers it necessary, to reply within a period specified by the Office.
Where, after the expiry of the period referred to in Article 7(1), the opposing party submits facts or evidence that supplement relevant facts or evidence provided within that period and that relate to the same requirement laid down in Article 7(2), the Office shall exercise its discretion under Article 95(2) of Regulation (EU) 2017/1001 in deciding whether to accept these supplementing facts or evidence. For that purpose, the Office shall take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence.
The Office shall invite the applicant to submit further observations in response if it deems it appropriate under the circumstances.
Where the opposition has not been rejected pursuant to paragraph 1 and the evidence submitted by the opposing party is not sufficient to substantiate the opposition in accordance with Article 7 for any of the earlier rights, the opposition shall be rejected as unfounded.
Article 6(2) and (3) shall apply mutatis mutandis after the date on which the adversarial part of the opposition proceedings is deemed to commence. Where the applicant wishes to withdraw or restrict the contested application, it shall do so by way of a separate document.
In appropriate cases, the Office may invite the parties to limit their observations to particular issues, in which case it shall allow them to raise the other issues at a later stage of the proceedings. The Office shall not be required to inform a party of the possibility of producing certain relevant facts or evidence which that party previously failed to produce.
Article 9
Multiple oppositions
Where a number of oppositions have been entered in respect of the same application for the registration of an EU trade mark, the Office may examine them in one set of proceedings. The Office may subsequently decide to examine those oppositions separately.
Where a preliminary examination of one or more oppositions reveals that the EU trade mark for which an application for registration has been filed may be ineligible for registration in respect of some or all of the goods or services for which registration is sought, the Office may suspend the other opposition proceedings relating to that application. The Office shall inform the opposing parties affected by the suspension of any relevant decisions taken in the context of those proceedings which are ongoing.
Once a decision rejecting an application as referred to in paragraph 1 has become final, the oppositions for which proceedings have been suspended in accordance with paragraph 2 shall be deemed to have been disposed of and the opposing parties concerned shall be informed accordingly. Such a disposition shall be considered to constitute a case which has not proceeded to judgment within the meaning of Article 109(5) of Regulation (EU) 2017/1001.
The Office shall refund 50 % of the opposition fee paid by each opposing party whose opposition is deemed to have been disposed of in accordance with paragraph 3, provided that the suspension of the proceedings relating to that opposition took place before the commencement of the adversarial part of the proceedings.
Article 10
Proof of use
A request for proof of use of an earlier mark pursuant to Article 47(2) or (3) of Regulation (EU) 2017/1001 shall be admissible if it is submitted as an unconditional request in a separate document within the period specified by the Office pursuant to Article 8(2) of this Regulation.
Where the applicant has made a request for proof of use of an earlier mark which complies with the requirements of Article 47(2) or (3) of Regulation (EU) 2017/1001, the Office shall invite the opposing party to provide the proof required within a time limit specified by the Office. Where the opposing party does not provide any evidence or reasons for non-use before the time limit expires or where the evidence or reasons provided are manifestly irrelevant or manifestly insufficient, the Office shall reject the opposition in so far as it is based on that earlier mark.
The indications and evidence of use shall establish the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.
The evidence referred to in paragraph 3 shall be filed in accordance with Article 55(2) and Articles 63 and 64 and shall be limited to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 97(1)(f) of Regulation (EU) 2017/1001.
A request for proof of use may be filed at the same time as observations on the grounds on which the opposition is based. Such observations may also be filed together with the observations in reply to the proof of use.
Where the evidence supplied by the opposing party is not in the language of the opposition proceedings, the Office may require the opposing party to submit a translation of that evidence in that language pursuant to Article 24 of Implementing Regulation (EU) 2018/626.
Where after the expiry of the time limit referred to in paragraph 2, the opposing party submits indications or evidence that supplement relevant indications or evidence already submitted before expiry of that time limit and relate to the same requirement laid down in paragraph 3, the Office shall exercise its discretion under Article 95(2) of Regulation (EU) 2017/1001 in deciding whether to accept those supplementary indications or evidence. For that purpose, the Office shall take into account, in particular, the stage of proceedings and whether the indications or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the indications or evidence.
TITLE III
AMENDMENT OF THE APPLICATION
Article 11
Amendment of the application
A request for amendment of an application pursuant to Article 49(2) of Regulation (EU) 2017/1001 shall contain:
(a) the file number of the application;
(b) the name and address of the applicant in accordance with Article 2(1)(b) of Implementing Regulation (EU) 2018/626;
(c) an indication of the element of the application to be amended, and that element in its amended version;
(d) where the amendment relates to the representation of the mark, a representation of the mark as amended, in accordance with Article 3 of Implementing Regulation (EU) 2018/626.
Where the requirements for the amendment of the application are not fulfilled, the Office shall communicate the deficiency to the applicant and shall specify a time limit for remedying the deficiency. Where the applicant does not remedy the deficiency within the specified time limit, the Office shall reject the request for amendment.
Where the amended trade mark application is published pursuant to Article 49(2) of Regulation (EU) 2017/1001, Articles 2 to 10 of this Regulation shall apply mutatis mutandis.
A single request for amendment may be made for the amendment of the same element in two or more applications by the same applicant.
Paragraphs 1, 2 and 4 shall apply mutatis mutandis for applications to correct the name or the business address of a representative appointed by the applicant.
TITLE IV
REVOCATION AND INVALIDITY OR ASSIGNMENT
Article 12
Application for revocation or for a declaration of invalidity
An application to the Office for revocation or for a declaration of invalidity pursuant to Article 63 of Regulation (EU) 2017/1001 shall contain:
(a) the registration number of the EU trade mark in respect of which revocation or a declaration of invalidity is sought and the name of its proprietor;
(b) the grounds on which the application is based by means of a statement that the respective requirements laid down in Articles 58, 59, 60, 81, 82, 91 or 92 of Regulation (EU) 2017/1001 are fulfilled;
(d) an indication of the goods or services in respect of which revocation or a declaration of invalidity is sought, in the absence of which the application shall be deemed to be directed against all the goods or services covered by the contested EU trade mark.
In addition to the requirements laid down in paragraph 1, an application for a declaration of invalidity based on relative grounds shall contain the following:
(a) in the case of an application pursuant to Article 60(1) of Regulation (EU) 2017/1001, an identification of the earlier right on which the application is based, in accordance with Article 2(2)(b) of this Regulation, which shall apply mutatis mutandis to such an application;
(b) in the case of an application pursuant to Article 60(2) of Regulation (EU) 2017/1001, an indication of the nature of the earlier right on which the application is based, its representation and an indication of whether this earlier right exists in the whole of the Union or in one or more Member States, and if so, an indication of those Member States;
(c) particulars pursuant to Article 2(2)(d) to (g) of this Regulation, which apply mutatis mutandis to such an application;
(d) where the application is entered by a licensee or by a person who is entitled under the relevant Union legislation or national law to exercise an earlier right, an indication concerning the authorisation or entitlement to file the application.
Where the application for a declaration of invalidity pursuant to Article 60 of Regulation (EU) 2017/1001 is based on more than one earlier mark or earlier right, paragraphs 1(b) and 2 of this Article shall apply for each of those marks or rights.
The application may contain a reasoned statement on the grounds setting out the facts and arguments on which it is based and supporting evidence.
Article 13
Languages used in revocation or invalidity proceedings
The applicant for revocation or for a declaration of invalidity or the proprietor of the EU trade mark may inform the Office before the expiry of a period of two months of receipt by the EU trade mark proprietor of the communication referred to in Article 17(1), that a different language of proceedings has been agreed pursuant to Article 146(8) of Regulation (EU) 2017/1001. Where the application has not been filed in that language, the proprietor may request that the applicant file a translation in that language. Such a request shall be received by the Office before the expiry of the period of two months of receipt by the EU trade mark proprietor of the communication referred to in Article 17(1). The Office shall specify a time limit for the applicant to file such a translation. Where that translation is not filed or filed late, the language of the proceedings shall remain unchanged.
Article 14
Information to the parties concerning an application for revocation or for a declaration of invalidity
An application for revocation or for a declaration of invalidity and any document submitted by the applicant, as well as any communication addressed to one of the parties by the Office prior to the finding on admissibility shall be sent by the Office to the other party for the purposes of informing of the introduction of an application for revocation or for a declaration of invalidity.
Article 15
Admissibility of an application for revocation or for a declaration of invalidity
Where the fee required under Article 63(2) of Regulation (EU) 2017/1001 has not been paid, the Office shall invite the applicant to pay the fee within a period specified by it. Where the required fee is not paid within the specified period, the Office shall inform the applicant that the application for revocation or for a declaration of invalidity is deemed not to have been entered. Where the fee has been paid after the expiry of the specified period, it shall be refunded to the applicant.
Where the application has been filed in a language which is not one of the languages of the Office as required under Article 146(5) of Regulation (EU) 2017/1001, or it does not comply with Article 12(1)(a) or (b) or, where applicable, Article 12(2)(a) or (b) of this Regulation, the Office shall reject the application as inadmissible.
Where the translation required under the second subparagraph of Article 146(7) Regulation (EU) 2017/1001 is not filed within a period of one month of the date of filing an application for revocation or a declaration of invalidity, the Office shall reject the application for revocation or for a declaration of invalidity as inadmissible.
Where the application does not comply with the provisions laid down in Article 12(1)(c), Article 12(2)(c) or (d), the Office shall inform the applicant accordingly and shall invite the applicant to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before the time limit expires, the Office shall reject the application as inadmissible.
The Office shall notify the applicant and the proprietor of the EU trade mark of any finding pursuant to paragraph 1 that the application for revocation or a declaration of invalidity is deemed not to have been entered and of any decision to reject the application for revocation or a declaration of invalidity on the grounds of inadmissibility under paragraphs 2, 3 or 4. Where an application for revocation or a declaration of invalidity is rejected in its entirety as inadmissible pursuant to paragraphs 2, 3 or 4, prior to the notification of Article 17(1), no decision on costs shall be taken.
Article 16
Substantiation of an application for revocation or for a declaration of invalidity
The applicant shall present the facts, evidence and arguments in support of the application up to the closure of the adversarial part of revocation or invalidity proceedings. In particular, the applicant shall provide the following:
(a) in the case of an application pursuant to Article 58(1)(b) or (c) or Article 59 of Regulation (EU) 2017/1001, facts, arguments and evidence to support the grounds on which the application for revocation or a declaration of invalidity is based;
(b) in the case of an application pursuant to Article 60(1) of Regulation (EU) 2017/1001, the evidence required by Article 7(2) of this Regulation and the provisions of Article 7(3) shall apply mutatis mutandis;
(c) in the case of an application pursuant to Article 60(2) of Regulation (EU) 2017/1001, evidence of acquisition, continued existence and scope of protection of the relevant earlier right as well as evidence proving that the applicant is entitled to file the application, including, where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence. Where the evidence concerning the filing or registration of an earlier right under Article 60(2)(d) of Regulation (EU) 2017/1001 or the evidence concerning the contents of the relevant national law is accessible online from a source recognised by the Office, the applicant may provide such evidence by making reference to that source.
Evidence concerning the filing, registration or renewal of earlier rights or, where applicable, the content of the relevant national law, including evidence accessible online, as referred to in paragraph 1(b) and (c), shall be filed in the language of the proceedings or shall be accompanied by a translation into that language. The translation shall be submitted by the applicant of the applicant's own motion within one month from the filing of such evidence. Any other evidence submitted by the applicant to substantiate the application or, in case of an application for revocation under Article 58(1)(a) of Regulation (EU) 2017/1001, by the proprietor of the contested EU trade mark, shall be subject to Article 24 of Implementing Regulation (EU) 2018/626. Translations submitted after the expiry of the relevant time limits shall not be taken into account.
Article 17
Examination on the merits of an application for revocation or for a declaration of invalidity
Where the application is found admissible pursuant to Article 15, the Office shall send a communication to the parties informing them that the adversarial part of the revocation or invalidity proceedings has commenced and inviting the proprietor of the EU trade mark to file observations within a specified period.
Where the Office has invited a party in accordance with Article 64(1) of Regulation (EU) 2017/1001 to file observations within a specified period and that party does not submit any observations within that period, the Office shall close the adversarial part of the proceedings and base its ruling on the revocation or invalidity on the basis of the evidence before it.
Where the applicant has not submitted the facts, arguments or evidence required to substantiate the application, the application shall be rejected as unfounded.
Without prejudice to Article 62, all observations filed by the parties shall be sent to the other party concerned.
Where the proprietor surrenders the EU trade mark subject to an application as referred to in Article 12 to cover only goods or services against which the application is not directed, or the EU trade mark is revoked or declared invalid in parallel proceedings, or expires, the proceedings shall be closed except where Article 57(2) of Regulation (EU) 2017/1001 shall apply or the applicant shows a legitimate interest in obtaining a decision on the merits.
Where the proprietor partially surrenders the EU trade mark by deleting some of the goods or services against which the application is directed, the Office shall invite the applicant to state, within such a period as it may specify, whether it maintains the application and if so, against which of the remaining goods or services. Where the applicant withdraws the application in light of the surrender, or the Office is informed about a settlement between the parties, the proceedings shall be closed.
Where the proprietor wishes to surrender the contested EU trade mark, it shall do so by way of a separate document.
Article 8(9) shall apply mutatis mutandis.
Article 18
Multiple applications for revocation or for a declaration of invalidity
Where a number of applications for revocation or for a declaration of invalidity have been filed relating to the same EU trade mark, the Office may examine them in one set of proceedings. The Office may subsequently decide to examine those applications separately.
Article 9(2), (3) and (4) shall apply mutatis mutandis.
Article 19
Proof of use in relation to an application for revocation or for a declaration of invalidity
In the case of an application for revocation based on Article 58(1)(a) of Regulation (EU) 2017/1001, the Office shall invite the proprietor of the EU trade mark to provide proof of genuine use of that mark or of proper reasons for non-use, within such period as it shall specify. Where the proprietor does not provide any evidence of genuine use or of reasons for non-use before the time limit expires or the evidence or reasons provided are manifestly irrelevant or manifestly insufficient, the EU trade mark shall be revoked. Article 10(3), (4), (6) and (7) of this Regulation shall apply mutatis mutandis.
A request for proof of use pursuant to Article 64(2) or (3) of Regulation (EU) 2017/1001 shall be admissible if the proprietor of the EU trade mark submits it as an unconditional request in a separate document within the period specified by the Office pursuant to Article 17(1) of this Regulation. Where the proprietor of the EU trade mark has made a request for proof of use of an earlier mark or of proper reasons for non-use which complies with the requirements of Article 64(2) or (3) of Regulation (EU) 2017/1001, the Office shall invite the applicant for a declaration of invalidity to provide the proof required within a time limit specified by the Office. Where the applicant for a declaration of invalidity does not provide any evidence of genuine use or of reasons for non-use before the time limit expires or the evidence or reasons provided are manifestly irrelevant or manifestly insufficient, the Office shall reject the application for a declaration of invalidity in so far as it is based on that earlier mark. Article 10(3) to (7) of this Regulation shall apply mutatis mutandis.
Article 20
Request for assignment
Where the proprietor of a trade mark requests, in accordance with Article 21(1) and (2)(a) of Regulation (EU) 2017/1001, an assignment instead of a declaration of invalidity, the provisions of Articles 12 to 19 of this Regulation shall apply mutatis mutandis.
Where a request for assignment pursuant to Article 21(2) of Regulation (EU) 2017/1001 is partially or totally granted by the Office or by an EU trade mark court and the decision or judgment has become final, the Office shall ensure that the resulting partial or total transfer of the EU trade mark is entered in the Register and published.
TITLE V
APPEALS
Article 21
Notice of appeal
A notice of appeal filed in accordance with Article 68(1) of Regulation (EU) 2017/1001 shall contain the following:
(a) the name and address of the appellant in accordance with Article 2(1)(b) of Implementing Regulation (EU) 2018/626;
(b) where the appellant has appointed a representative, the name and the business address of the representative in accordance with Article 2(1)(e) of Implementing Regulation (EU) 2018/626;
(c) where representation of the appellant is mandatory pursuant to Article 119(2) of Regulation (EU) 2017/1001, the name and the business address of the representative in accordance with Article 2(1)(e) of Implementing Regulation (EU) 2018/626;
(d) a clear and unambiguous identification of the decision subject to appeal indicating the date on which it was issued and the file number of the proceedings to which the decision subject to appeal relates;
(e) where the decision subject to appeal is only contested in part, a clear and unambiguous identification of the goods or services in respect of which the decision subject to appeal is contested.
Where the notice of appeal is filed in another official language of the Union than the language of proceedings, the appellant shall provide a translation thereof within four months of the date of notification of the decision subject to appeal.
Where in ex parte proceedings the decision subject to appeal has been taken in an official language other than the language of proceedings, the appellant may file the notice of appeal either in the language of the proceedings or in the language in which the decision subject to appeal was taken; in either case, the language used for the notice of appeal shall become the language of the appeal proceedings and paragraph 2 shall not apply.
As soon as the notice of appeal has been filed in inter partes proceedings, it shall be notified to the defendant.
Article 22
Statement of grounds
A statement setting out the grounds of appeal filed pursuant to the fourth sentence of Article 68(1) of Regulation (EU) 2017/1001 shall contain a clear and unambiguous identification of the following:
(a) the appeal proceedings to which it refers by indicating either the corresponding appeal number or the decision subject to appeal in accordance with the requirements laid down in Article 21(1)(d) of this Regulation;
(b) the grounds of appeal on which the annulment of the contested decision is requested within the extent identified in accordance with Article 21(1)(e) of this Regulation;
(c) the facts, evidence and arguments in support of the grounds invoked, submitted in accordance with the requirements set out in Article 55(2).
The statement of grounds shall be filed in the language of the appeal proceedings as determined in accordance with Article 21(2) and (3). Where the statement of grounds is filed in another official language of the Union, the appellant shall provide a translation thereof within one month of the date of the submission of the original statement.
Article 23
Admissibility of an appeal
The Board of Appeal shall reject an appeal as inadmissible in any of the following events:
(a) where the notice of appeal has not been filed within two months of the date of notification of the decision subject to appeal;
(b) where the appeal does not comply with Articles 66 and 67 of Regulation (EU) 2017/1001, or with those laid down in Article 21(1)(d) and Article 21(2) and (3) of this Regulation, unless those deficiencies are remedied within four months of the date of notification of the decision subject to appeal;
(c) where the notice of appeal does not comply with the requirements laid down in Article 21(1)(a), (b), (c) and (e), and the appellant has, despite having been informed thereof by the Board of Appeal, not remedied those deficiencies within the time limit specified by the Board of Appeal to that effect;
(d) where the statement of grounds has not been filed within four months of the date of notification of the decision subject to appeal;
(e) where the statement of grounds does not comply with the requirements laid down in Article 22(1)(a) and (b), and the appellant has, despite having been informed thereof by the Board of Appeal, not remedied those deficiencies within the time limit specified by the Board of Appeal to that effect or has not submitted the translation of the statement of grounds within one month of the date of the submission of the original statement in accordance with Article 22(2).
Where the appeal appears to be inadmissible, the chairperson of the Board of Appeal to which the case has been allocated pursuant to Article 35(1) may request the Board of Appeal to decide without delay on the admissibility of the appeal prior to the notification to the defendant of the notice or of the statement of grounds, as the case may be.
The Board of Appeal shall declare an appeal as deemed not to have been filed where the appeal fee has been paid after the expiry of the time limit set out in the first sentence of Article 68(1) of Regulation (EU) 2017/1001. In such a case, paragraph 2 of this Article shall apply.
Article 24
Response
In inter partes proceedings, the defendant may file a response within two months of the date of notification of the appellant's statement of grounds. In exceptional circumstances, that time limit may be extended upon reasoned request by the defendant.
The response shall contain the name and address of the defendant in accordance with Article 2(1)(b) of Implementing Regulation (EU) 2018/626 and shall comply, mutatis mutandis, with the conditions laid down in Article 21(1)(b), (c) and (d), Article 22(1)(a) and (c) and Article 22(2) of this Regulation.
Article 25
Cross appeal
Where the defendant seeks a decision annulling or altering the contested decision on a point not raised in the appeal, pursuant to Article 68(2) of Regulation (EU) 2017/1001, that cross appeal shall be filed within the time limit for filing a response in accordance with Article 24(1) of this Regulation.
A cross appeal shall be submitted by a document separate from the response.
The cross appeal shall contain the name and address of the defendant in accordance with Article 2(1)(b) of Implementing Regulation (EU) 2018/626 and shall comply mutatis mutandis with the conditions laid down in Article 21(1)(b) to (e) and Article 22 of this Regulation.
A cross appeal shall be rejected as inadmissible in any of the following events:
(a) where it has not been filed within the time limit laid down in paragraph 1;
(b) where it has not been filed in observance of the requirements laid down either in paragraph 2 or Article 21(1)(d);
(c) where it does not comply with the requirements referred to in paragraph 3, and the defendant has, despite having been informed thereof by the Board of Appeal, not remedied these deficiencies within the time limit specified by the Board of Appeal to that effect or has not submitted the translation of the cross appeal and the corresponding statement of grounds within one month of the date of submission of the original.
The appellant shall be invited to submit observations on the defendant's cross appeal within two months of the date of notification to the appellant. In exceptional circumstances, that time limit may be extended by the Board of Appeal upon the reasoned request of the appellant. Article 26 shall apply mutatis mutandis.
Article 26
Reply and rejoinder in inter partes proceedings
Upon the appellant's reasoned request filed within two weeks of the notification of the response, the Board of Appeal may, pursuant to Article 70(2) of Regulation (EU) 2017/1001, authorise the appellant to supplement the statement of grounds with a reply within a period specified by the Board of Appeal.
In such a case, the Board of Appeal shall also authorise the defendant to supplement the response with a rejoinder within a period specified by the Board of Appeal.
Article 27
Examination of the appeal
In ex parte proceedings, and with respect to those goods or services which form part of the subject matter of the appeal, the Board of Appeal, in compliance with Article 45(3) of Regulation (EU) 2017/1001, shall proceed in accordance with Article 42 of Regulation (EU) 2017/1001 where it raises a ground for refusal of the trade mark application which had not already been invoked in the decision subject to appeal in application of that provision.
In inter partes proceedings, the examination of the appeal and, as the case may be, the cross appeal, shall be restricted to the grounds invoked in the statement of grounds and, as the case may be, in the cross appeal. Matters of law not raised by the parties shall be examined by the Board of Appeal only where they concern essential procedural requirements or where it is necessary to resolve them in order to ensure a correct application of Regulation (EU) 2017/1001 having regard to the facts, evidence and arguments presented by the parties.
The examination of the appeal shall include the following claims or requests provided that they have been raised in the statement of grounds of the appeal or, as the case may be, in the cross appeal and provided that they were raised in due time in the proceedings before the instance of the Office which adopted the decision subject to appeal:
(a) distinctiveness acquired through use as referred to in Article 7(3) and Article 59(2) of Regulation (EU) 2017/1001;
(b) recognition of the earlier trade mark on the market acquired through use for the purposes of Article 8(1)(b) of Regulation (EU) 2017/1001;
(c) proof of use pursuant to Article 47(2) and (3) of Regulation (EU) 2017/1001 or Article 64(2) and (3) of Regulation (EU) 2017/1001.
In accordance with Article 95(2) of Regulation (EU) 2017/1001, the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:
(a) they are, on the face of it, likely to be relevant for the outcome of the case; and
(b) they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.
The Board of Appeal shall, at the latest in its decision on the appeal and, as the case may be, the cross appeal, decide on requests for restriction, division or partial surrender of the contested mark declared during the appeal proceedings by the applicant or the proprietor in accordance with Articles 49, 50 or 57 of Regulation (EU) 2017/1001. Where the Board of Appeal accepts the restriction, division or partial surrender, it shall without delay inform the department in charge of the Register and the departments dealing with parallel proceedings involving the same mark accordingly.
Article 28
Communications by the Board of Appeal
Communications by the Board of Appeal in the course of the examination of the appeal or with a view to facilitating an amicable settlement of proceedings shall be prepared by the rapporteur and shall be signed by the rapporteur on behalf of the Board of Appeal, in agreement with the chairperson of the Board of Appeal.
Where a Board of Appeal communicates with the parties regarding its provisional opinion on matters of fact or law, it shall state that it is not bound by such a communication.
Article 29
Comments on questions of general interest
The Board of Appeal may, on its own initiative or upon the written, reasoned request of the Executive Director of the Office, invite the Executive Director to comment on questions of general interest which arise in the course of proceedings pending before it. The parties shall be entitled to submit their observations on the Executive Director's comments.
Article 30
Reopening of the examination of absolute grounds
Where, in ex parte proceedings, the Board of Appeal considers that an absolute ground for refusal may be applicable to goods or services listed in the trade mark application which do not form part of the subject matter of the appeal, it shall inform the examiner competent for examining that application who may decide to reopen the examination pursuant to Article 45(3) of Regulation (EU) 2017/1001 with respect to those goods or services.
Where a decision of the Opposition Division is subject to an appeal, the Board of Appeal may, by means of a reasoned interim decision and without prejudice to Article 66(1) of Regulation (EU) 2017/1001, suspend the appeal proceedings and remit the contested application to the examiner competent for examining that application with a recommendation to reopen the examination pursuant to Article 45(3) of Regulation (EU) 2017/1001, where it considers that an absolute ground for refusal shall apply to some or all of the goods or services listed in the trade mark application.
Where the contested application has been remitted in application of paragraph 2, the examiner shall inform the Board of Appeal without delay whether or not the examination of the contested application has been reopened. Where the examination has been reopened, the appeal proceedings shall remain suspended until the examiner's decision has been taken and, where the contested application is rejected in whole or in part, until the examiner's decision to this effect has become final.
Article 31
Examination of an appeal as a matter of priority
Upon reasoned request of the appellant or of the defendant and after hearing the other party, the Board of Appeal may decide, having regard to the particular urgency and the circumstances of the case, to examine the appeal as a matter of priority, without prejudice to the provisions in Articles 23 and 26, including the provisions on time limits.
The request for the examination of the appeal as a matter of priority may be filed at any time in the course of the appeal proceedings. It shall be filed in a separate document and shall be supported by evidence as to the urgency and the particular circumstances of the case.
Article 32
Formal content of the Board of Appeal's decision
The Board of Appeal's decision shall contain:
(a) a statement that it is delivered by the Boards of Appeal;
(b) the date when the decision was taken;
(c) the names of the parties and of their representatives;
(d) the number of the appeal to which it refers and an identification of the decision subject to appeal in accordance with the requirements laid down in Article 21(1)(d);
(e) an indication as to the formation of the Board of Appeal;
(f) the name and, without prejudice to Article 39(5), the signature of the chairperson and members who took part in the decision, including an indication of who acted as rapporteur in the case, or, where the decision is delivered by a single member, the name and signature of the member who took the decision;
(g) the name and the signature of the Registrar or, as the case may be, of the member of the Registry signing on the Registrar's behalf;
(h) a summary of the facts and of the arguments submitted by the parties;
(i) a statement of the reasons for which the decision has been taken;
(j) the order of the Board of Appeal, including, where necessary, a decision on costs.
Article 33
Reimbursement of the appeal fee
The appeal fee shall be reimbursed by order of the Board of Appeal in either of the following events:
(a) where the appeal is not deemed to have been filed in accordance with the second sentence of Article 68(1) of Regulation (EU) 2017/1001;
(b) where the decision-making instance of the Office which adopted the contested decision grants revision pursuant to Article 69(1) of Regulation (EU) 2017/1001 or revokes the contested decision in application of Article 103 of Regulation (EU) 2017/1001;
(c) where, following reopening of the examination proceedings within the meaning of Article 45(3) of Regulation (EU) 2017/1001 upon the Board of Appeal's recommendation pursuant to Article 30(2) of this Regulation, the contested application has been rejected by final decision of the examiner and the appeal has become devoid of purpose as a consequence thereof;
(d) where the Board of Appeal considers such reimbursement equitable by reason of a substantial procedural violation.
Article 34
Revision and revocation of the decision subject to appeal
Where, in ex parte proceedings, the appeal is not rejected pursuant to Article 23(1), the Board of Appeal shall submit the notice of appeal and the statement of grounds of appeal to the instance of the Office which adopted the contested decision for the purposes of Article 69 of Regulation (EU) 2017/1001.
Where the instance of the Office which adopted the decision subject to appeal decides to grant revision pursuant to Article 69(1) of Regulation (EU) 2017/1001, it shall inform the Board of Appeal thereof without delay.
Where the instance of the Office which adopted the decision subject to appeal has initiated the procedure for revoking the decision subject to appeal pursuant to Article 103(2) of Regulation (EU) 2017/1001, it shall inform the Board of Appeal thereof without delay for the purposes of Article 71 of this Regulation. It shall also inform the Board of Appeal without delay about the final outcome of that procedure.
Article 35
Allocation of an appeal to a Board and designation of a rapporteur
As soon as the notice of appeal has been filed, the President of the Boards shall allocate the case to a Board of Appeal according to the objective criteria determined by the Presidium of the Boards of Appeal referred to in Article 166(4)(c) of Regulation (EU) 2017/1001.
For each case allocated to a Board of Appeal pursuant to paragraph 1, its chairperson shall designate a member of that Board of Appeal, or the chairperson, as rapporteur.
Where a case falls under the authority of a single member pursuant to Article 36(1), the Board of Appeal handling a case shall designate the rapporteur as single member pursuant to Article 165(5) of Regulation (EU) 2017/1001.
Where a decision of a Board of Appeal on a case has been annulled or altered by a final ruling of the General Court or, as the case may be, of the Court of Justice, the President of the Boards of Appeal shall, with a view to complying with that ruling in accordance with Article 72(6) of Regulation (EU) 2017/1001, reallocate the case pursuant to paragraph 1 of this Article to a Board of Appeal, which shall not comprise those members who had adopted the annulled decision, except where the case is referred to the enlarged Board of Appeal (‘Grand Board’) or where the annulled decision had been taken by the Grand Board.
Where several appeals are filed against the same decision, those appeals shall be considered in the same proceedings. Where appeals involving the same parties are filed against separate decisions concerning the same mark, or have other relevant factual or legal elements in common, those appeals may be considered in joined proceedings with the consent of the parties.
Article 36
Cases falling under the authority of a single member
The Board of Appeal handling the case may designate a single member within the meaning of Article 165(2) of Regulation (EU) 2017/1001 for the purposes of the following decisions:
(a) decisions pursuant to Article 23;
(b) decisions closing the appeal proceedings following withdrawal, rejection, surrender or cancellation of the contested or the earlier mark;
(c) decisions closing the appeal proceedings following withdrawal of the opposition, of the request for revocation or for a declaration of invalidity or of the appeal;
(d) decisions on measures pursuant to Article 102(1) and Article 103(2) of Regulation (EU) 2017/1001, provided that the correction or, as the case may be, the revocation of the decision on the appeal concerns a decision taken by a single member;
(e) decisions pursuant to Article 104(4) of Regulation (EU) 2017/1001;
(f) decisions pursuant to Article 109(4), (5) and (8) of Regulation (EU) 2017/1001;
(g) decisions on appeals against decisions in ex parte proceedings taken on the grounds laid down in Article 7 of Regulation (EU) 2017/1001, which are either manifestly unfounded or manifestly well founded.
Where the single member considers that the conditions set out in paragraph 1 or in Article 165(5) of Regulation (EU) 2017/1001 are not, or no longer, met, the single member shall refer the case back to the Board of Appeal in its composition of three members by submitting a draft decision pursuant to Article 41 of this Regulation.
Article 37
Referral to the Grand Board
Without prejudice to the faculty to refer a case to the Grand Board under Article 165(3) of Regulation (EU) 2017/1001, a Board of Appeal shall refer a case allocated to it to the Grand Board if it considers that it must deviate from an interpretation of the relevant legislation given in an earlier decision of the Grand Board, or if it observes that the Boards of Appeal have issued diverging decisions on a point of law which is liable to affect the outcome of the case.
All decisions on referrals of appeal cases to the Grand Board shall state the reasons for which the referring Board of Appeal or, as the case may be, the Presidium of the Boards of Appeal considers that this is justified, shall be communicated to the parties to the case and shall be published in the Official Journal of the Office.
The Grand Board shall, without delay, refer the case back to the Board of Appeal to which it was originally allocated if it believes that the conditions for the original referral are not, or no longer, met.
Requests for a reasoned opinion on questions on a point of law pursuant to Article 157(4)(l) of Regulation (EU) 2017/1001 shall be referred to the Grand Board in writing, shall state the questions of law of which the interpretation is sought, and may also state the Executive Director's view on the different possible interpretations as well as on their respective legal and practical consequences. The request shall be published in the Official Journal of the Office.
Where a Board of Appeal has to decide, in a case pending before it, on the same point in law that has already been raised in a referral to the Grand Board pursuant to Article 165(3) or Article 157(4)(l) of Regulation (EU) 2017/1001, it shall suspend the proceedings until the Grand Board has taken its decision or delivered its reasoned opinion.
Groups or bodies representing manufacturers, producers, suppliers of services, traders or consumers which can establish an interest in the result of a case on appeal or a request for a reasoned opinion brought before the Grand Board, may submit written observations within two months following the publication in the Official Journal of the Office of the decision of referral or, as the case may be, the request for a reasoned opinion. They shall not be parties to the proceedings before the Grand Board and shall bear their own costs.
Article 38
Change in the composition of a Board
Where, after oral proceedings, the composition of a Board of Appeal is changed pursuant to Article 43(2) and (3), all parties to the proceedings shall be informed that, at the request of any party, fresh oral proceedings shall be held before the Board of Appeal in its new composition. Fresh oral proceedings shall also be held if the new member so requests and provided that the other members of the Board of Appeal have given their agreement.
The new member of a Board of Appeal shall be bound to the same extent as the other members by any interim decision which has already been taken.
Article 39
Deliberation, voting and signing of decisions
The rapporteur shall submit to the other members of the Board of Appeal a draft of the decision to be taken and shall set a reasonable time limit within which to oppose it or to ask for changes.
The Board of Appeal shall meet to deliberate on the decision to be taken if it appears that its members are not all of the same opinion. Only members of the Board of Appeal shall participate in the deliberations; the chairperson of the Board of Appeal may, however, authorise other officers such as the Registrar or interpreters to attend. Deliberations shall be and remain secret.
During the deliberations between members of a Board of Appeal, the opinion of the rapporteur shall be heard first, and, if the rapporteur is not the chairperson, the opinion of the chairperson shall be heard last.
If voting is necessary, votes shall be taken in the same sequence, save that the chairperson shall always vote last. Abstentions shall not be permitted.
All members of the Board of Appeal taking the decision shall sign it. However, where the Board of Appeal has already reached a final decision and a member is unable to act, that member shall not be replaced and the chairperson shall sign the decision on the member's behalf. Where the chairperson is unable to act, the most senior member of the Board of Appeal as determined in accordance with Article 43(1) shall sign the decision on behalf of the chairperson.
Paragraphs 1 to 5 shall not apply where a decision is to be taken by a single member pursuant to Article 165(2) of Regulation (EU) 2017/1001 and Article 36(1) of this Regulation. In such cases, decisions shall be signed by the single member.
Article 40
Chairperson of a Board of Appeal
A chairperson shall preside over a Board of Appeal and shall have the following duties:
(a) designate a member of the Board of Appeal, or himself or herself, as rapporteur for each case allocated to that Board of Appeal in accordance with Article 35(2);
(b) designate, on behalf of the Board of Appeal, the rapporteur as single member pursuant to Article 165(2) of Regulation (EU) 2017/1001;
(c) request the Board of Appeal to decide on the admissibility of the appeal in accordance with Article 23(2) of this Regulation;
(d) direct the preparatory examination of the case carried out by the rapporteur in accordance with Article 41 of this Regulation;
(e) preside over, and sign the minutes of, oral hearings and the taking of evidence.
Article 41
Rapporteur to a Board of Appeal
The rapporteur shall carry out a preliminary study of the appeal assigned to the rapporteur, prepare the case for examination and deliberation by the Board of Appeal, and draft the decision to be taken by the Board of Appeal.
To that effect, the rapporteur shall, where necessary and subject to the direction of the chairperson of the Board of Appeal, have the following duties:
(a) invite the parties to file observations in accordance with Article 70(2) of Regulation (EU) 2017/1001;
(b) decide on requests for the extension of time limits and, as the case may be, set time limits within the meaning of Article 24(1), Article 25(5) and Article 26 of this Regulation, and on suspensions pursuant to Article 71;
(c) prepare communications in accordance with Article 28 and the oral hearing;
(d) sign the minutes of oral proceedings and of the taking of evidence.
Article 42
Registry
A Registry shall be set up at the Boards of Appeal. It shall be responsible for the receipt, dispatch, safekeeping and notification of all documents relating to the proceedings before the Boards of Appeal, and for the compilation of the relevant files.
The Registry shall be headed by a Registrar. The Registrar shall fulfil the tasks referred to in this Article under the authority of the President of the Boards of Appeal, without prejudice to the provisions in paragraph 3.
The Registrar shall ensure that all formal requirements and time limits, laid down in Regulation (EU) 2017/1001, in this Regulation or in decisions of the Presidium of the Boards of Appeal adopted in accordance with Article 166(4)(c) and (d) of Regulation (EU) 2017/1001 are respected. To this effect, the Registrar shall have the following duties:
(a) sign the decisions taken by the Boards of Appeal in respect of appeals;
(b) take and sign the minutes of oral proceedings and of the taking of evidence;
(c) provide, either of its own motion or upon request from the Board of Appeal, reasoned opinions to the Board of Appeal on procedural and formal requirements including on irregularities pursuant to Article 23(2) of this Regulation;
(d) submit the appeal, in accordance with Article 34(1) of this Regulation, to the instance of the Office which adopted the contested decision;
(e) order, on behalf of the Board of Appeal, in the cases referred to in Article 33(a) and (b) of this Regulation, the reimbursement of the appeal fee.
The Registrar shall, upon delegation of the President of the Boards of Appeal, have the following duties:
(a) allocate cases in accordance with Article 35(1) and (4);
(b) implement, pursuant to Article 166(4)(b) of Regulation (EU) 2017/1001, decisions of the Presidium of the Boards of Appeal relating to the conduct of proceedings before the Boards of Appeal.
The Registrar may, upon delegation of the Presidium of the Boards of Appeal made upon proposal of the President of the Boards of Appeal, perform other tasks relating to the conduct of appeal proceedings before the Boards of Appeal and the organisation of their work.
The Registrar may delegate the tasks referred to in this Article to a member of the Registry.
Where the Registrar is prevented from acting within the meaning of Article 43(4), or where the post of Registrar is vacant, the President of the Boards of Appeal shall appoint a member of the Registry who shall perform the tasks of the Registrar in the Registrar's absence.
The members of the Registry shall be managed by the Registrar.
Article 43
Order of seniority and replacement of members and chairpersons
The seniority of chairpersons and members shall be calculated according to the date on which they took up their duties as specified in the instrument of appointment or, failing that, as fixed by the Management Board of the Office. Where there is equal seniority on that basis, the order of seniority shall be determined by age. Chairpersons and members whose term of office is renewed shall retain their former seniority.
Where the chairperson of a Board of Appeal is prevented from acting, that chairperson shall be replaced, on the basis of seniority as determined in accordance with paragraph 1, by the most senior member of that Board of Appeal, or, where no member of that Board of Appeal is available, by the most senior of the other members of the Boards of Appeal.
Where a member of a Board of Appeal is prevented from acting, that member shall be replaced, on the basis of seniority as determined in accordance with paragraph 1, by the most senior member of that Board of Appeal, or, where no member of that Board of Appeal is available, by the most senior of the other members of the Boards of Appeal.
For the purposes of paragraphs 2 and 3, chairpersons and members of the Boards of Appeal shall be considered to be prevented from acting in case of leave, sickness, inescapable commitments and exclusion pursuant to Article 169 of Regulation (EU) 2017/1001 and Article 35(4) of this Regulation. A chairperson shall also be considered to be prevented from acting where that chairperson acts ad interim as President of the Boards of Appeal pursuant to Article 47(2) of this Regulation. Where the post of chairperson or member is vacant, their respective functions shall be exercised ad interim pursuant to the provisions in paragraphs 2 and 3 of this Article concerning replacement.
Any members considering themselves prevented from acting shall without delay inform the chairperson of the Board of Appeal concerned. Any chairpersons considering themselves prevented from acting shall without delay inform simultaneously that chairperson's alternate determined in accordance with paragraph 2 and the President of the Boards of Appeal.
Article 44
Exclusion and objection
Before a decision is taken by a Board of Appeal pursuant to Article 169(4) of Regulation (EU) 2017/1001, the chairperson or member concerned shall be invited to present comments as to whether there is a reason for exclusion or objection.
Where the Board of Appeal obtains knowledge, from a source other than the member concerned or a party to the proceedings, of a possible reason for exclusion or objection under Article 169(3) of Regulation (EU) 2017/1001, the procedure laid down in Article 169(4) of Regulation (EU) 2017/1001 shall be applied.
The proceedings concerned shall be suspended until a decision is taken on the action to be taken pursuant to Article 169(4) of Regulation (EU) 2017/1001.
Article 45
Grand Board
The list comprising the names of all members of the Boards of Appeal other than the President of the Boards of Appeal and the chairpersons of the Boards of Appeal for the purposes of drawing in rotation the members of the Grand Board referred to in Article 167(2) of Regulation (EU) 2017/1001 shall be drawn up in the order of seniority determined in accordance with Article 43(1) of this Regulation. Where an appeal has been referred to the Grand Board pursuant to Article 165(3)(b) of Regulation (EU) 2017/1001, the Grand Board shall comprise the rapporteur designated prior to the referral.
Article 40 shall apply to the President of the Boards of Appeal acting in the capacity of chairperson of the Grand Board. Article 41 shall apply to the rapporteur to the Grand Board.
Where the President of the Boards of Appeal is prevented from acting as chairperson of the Grand Board, the President of the Boards of Appeal shall be replaced in that function and, as the case may be, as rapporteur to the Grand Board, on the basis of seniority as determined in accordance with Article 43(1), by the most senior chairperson of the Boards of Appeal. Where a member of the Grand Board is prevented from acting, that member shall be replaced by another member of the Boards of Appeal to be designated pursuant to Article 167(2) of Regulation (EU) 2017/1001 and paragraph 1 of this Article. Article 43(4) and (5) of this Regulation shall apply mutatis mutandis.
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