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 Grand Board shall not deliberate or vote on cases, and oral proceedings shall not take place before the Grand Board unless seven of its members are present, including its chairperson and the rapporteur.

Article 39(1) to (5) shall apply to the deliberations and voting of the Grand Board. In the event of a tie, the vote of the chairperson shall be decisive.

Article 32 shall apply to decisions of the Grand Board and mutatis mutandis to its reasoned opinions within the meaning of Article 157(4)(l) of Regulation (EU) 2017/1001.

The Presidium of the Boards of Appeal shall have the following duties:

The Presidium may validly deliberate only if at least two thirds of its members, including the chairperson of the Presidium and half of the chairpersons of the Boards of Appeal, rounded up if necessary, are present. Decisions of the Presidium shall be taken by a majority vote. In the event of a tie, the vote of the chairperson shall be decisive.

The decisions adopted by the Presidium pursuant to Article 43(1), to Article 45(1), and to paragraph 1(a) and (b) of this Article shall be published in the Official Journal of the Office.

Where the President of the Boards of Appeal is prevented from acting within the meaning of Article 43(4), the managerial and organisational functions conferred upon the President of the Boards of Appeal by Article 166(4) of Regulation (EU) 2017/1001 shall be exercised, on the basis of seniority as determined in accordance with Article 43(1) of this Regulation, by the most senior chairperson of the Boards of Appeal.

Where the post of the President of the Boards of Appeal is vacant, the functions of that president shall be exercised ad interim, on the basis of seniority as determined in accordance with Article 43(1), by the most senior chairperson of the Boards of Appeal.

The parties shall be summoned to oral proceedings provided for in Article 96 of Regulation (EU) 2017/1001 and their attention shall be drawn to paragraph 3 of this Article.

When issuing the summons, the Office shall request, where necessary, that the parties provide all relevant information and documents before the hearing. The Office may invite the parties to concentrate on one or more specified issues during the oral proceedings. It may also offer to the parties the possibility to take part in the oral proceedings by videoconference or other technical means.

If a party who has been duly summoned to oral proceedings before the Office does not appear as summoned, the proceedings may continue without that party.

The Office shall ensure that the case is ready for decision at the conclusion of the oral proceedings, unless there are special reasons to the contrary.

Oral proceedings shall be conducted in the language of the proceedings unless the parties agree to use a different official language of the Union.

The Office may communicate in oral proceedings in another official language of the Union and it may, upon request, authorise a party to do so provided that simultaneous interpretation into the language of proceedings can be made available. The costs of providing simultaneous interpretation shall be borne by the party making the request or by the Office as the case may be.

Where the Office considers it necessary to hear the oral evidence of parties, witnesses or experts or to carry out an inspection, it shall take an interim decision to that end, stating the means by which it intends to obtain the evidence, the relevant facts to be proved and the date, time and place of hearing or inspection. Where the hearing of oral evidence of witnesses or experts is requested by a party, the Office shall determine in its decision the period within which that party must make known to the Office the names and addresses of the witnesses or experts.

The summons of parties, witnesses or experts to give evidence shall contain:

Article 50(2) shall apply mutatis mutandis.

The Office shall decide in what form an opinion is to be submitted by an expert.

The terms of reference of the expert shall include:

Where an expert is appointed, the expert opinion shall be submitted in the language of the proceedings or accompanied by a translation into that language. A copy of any written opinion, and of the translation if needed, shall be sent to the parties.

The parties may object to the appointment of an expert on grounds of incompetence or on the same grounds as those on which objection may be made against an examiner or against a member of a Division or Board of Appeal pursuant to Article 169(1) and (3) of Regulation (EU) 2017/1001. Any objection to the appointment of an expert shall be submitted in the language of the proceedings, or accompanied by a translation into that language. The department of the Office concerned shall rule on the objection.

Minutes of oral proceedings or the taking of oral evidence shall be drawn up, containing:

The minutes shall become part of the file of the relevant EU trade mark application or registration. They shall be notified to the parties.

Where oral proceedings or the taking of evidence before the Office are recorded, the recording shall replace the minutes and paragraph 2 shall apply mutatis mutandis.

The taking of evidence by the Office may be made conditional upon deposit with it, by the party who has requested the evidence to be taken, of a sum which shall be fixed by reference to an estimate of the costs.

Witnesses and experts who are summoned by and appear before the Office shall be entitled to reimbursement of reasonable expenses for travel and subsistence where such expenses are incurred. An advance for such expenses may be granted to them by the Office.

Witnesses entitled to reimbursement pursuant to paragraph 2 shall also be entitled to appropriate compensation for loss of earnings, and experts to fees for their work. That compensation shall be paid to the witnesses and experts after they have fulfilled their duties or tasks, where such witnesses and experts have been summoned by the Office of its own initiative.

The amounts and advances for expenses to be paid pursuant to paragraphs 1, 2 and 3 shall be determined by the Executive Director and shall be published in the Official Journal of the Office. The amounts shall be calculated on the same basis as laid down in the Staff Regulations of the Officials of the Union and the Conditions of Employment of Other Servants of the Union, laid down in Council Regulation (EEC, Euratom, ECSC) No 259/68 (11) and Annex VII thereto.

Liability for the amounts due or paid pursuant to paragraphs 1 to 4 shall lie with:

The Office shall examine any evidence given or obtained in any proceedings before it to the extent necessary to take a decision in the proceedings in question.

The documents or other items of evidence shall be contained in annexes to a submission which shall be numbered consecutively. The submission shall include an index indicating, for each document or item of evidence annexed:

Where the submission or the annexes do not comply with the requirements set out in paragraph 2, the Office may invite the submitting party to remedy any deficiency, within a period specified by the Office.

Where the deficiency is not remedied within the period specified by the Office, and where it is still not possible for the Office to clearly establish to which ground or argument a document or item of evidence refers, that document or item shall not be taken into account.

In proceedings before the Office, notifications to be made by the Office shall be in accordance with Article 94(2) of Regulation (EU) 2017/1001 and shall consist in the transmission of the document to be notified to the parties concerned. Transmission may be effected by providing electronic access to that document.

Notifications shall be made by one of the following means:

Where the addressee has indicated contact details for communicating with the addressee through electronic means, the Office shall have the choice between those means and notification by post or courier.

Notification by electronic means covers transmissions by wire, by radio, by optical means or by other electromagnetic means, including the internet.

The Executive Director shall determine the details regarding the specific electronic means to be used, the manner in which electronic means will be used, and the time limit for notification by electronic means.

Notwithstanding Article 56(3), decisions subject to a time limit for appeal, summons and other documents as determined by the Executive Director shall be notified by courier service or registered post, in both cases with advice of delivery. All other notifications shall be either by courier service or registered post, whether or not with advice of delivery, or by ordinary post.

Notwithstanding Article 56(3), notifications in respect of addressees having neither their domicile nor their principal place of business or a real and effective industrial or commercial establishment in the European Economic Area (‘EEA’) and who have not appointed a representative as required by Article 119(2) of Regulation (EU) 2017/1001 shall be effected by posting the document requiring notification by ordinary post.

Where notification is effected by courier service or registered post, whether or not with advice of delivery, it shall be deemed to be delivered to the addressee on the tenth day following that of its posting, unless the letter has failed to reach the addressee or has reached the addressee at a later date. In the event of any dispute, it shall be for the Office to establish that the letter has reached its destination or to establish the date on which it was delivered to the addressee, as the case may be.

Notification by courier service or registered post shall be deemed to have been effected even if the addressee refuses to accept the letter.

Notification by ordinary post shall be deemed to have been effected on the 10th day following that of its posting.

Where a representative has been appointed or where the applicant first named in a common application is considered to be the common representative pursuant to Article 73(1), notifications shall be addressed to that appointed or common representative.

Where a single party has appointed several representatives, notification shall be effected in accordance with Article 2(1)(e) of Implementing Regulation (EU) 2018/626. Where several parties have appointed a common representative, notification of a single document to the common representative shall be sufficient.

A notification or other communication addressed by the Office to the duly authorised representative shall have the same effect as if it had been addressed to the represented person.

Applications for the registration of an EU trade mark as well as any other application provided for in Regulation (EU) 2017/1001 and all other communications addressed to the Office shall be submitted as follows:

In proceedings before the Office, the date on which a communication is received by the Office shall be considered to be its date of filing or submission.

Where a communication received by electronic means is incomplete or illegible or where the Office has reasonable doubts as to the accuracy of the transmission, the Office shall inform the sender accordingly and shall invite the sender, within a period to be specified by the Office, to retransmit the original or to submit it in accordance with paragraph (1)(b). Where that request is complied with within the period specified, the date of receipt of the retransmission or of the original shall be deemed to be the date of the receipt of the original communication. However, where the deficiency concerns the granting of a filing date for an application to register a trade mark, the provisions on the filing date shall apply. Where the request is not complied with within the period specified, the communication shall be deemed not to have been received.

Annexes to communications may be submitted on data carriers in accordance with the technical specifications determined by the Executive Director.

Where a communication with annexes is submitted in accordance with Article 63(1)(b) by a party to proceedings involving more than one party, the party shall submit as many copies of the annexes as there are parties to the proceedings. Annexes shall be indexed in accordance with the requirements laid down in Article 55(2).

The Office shall make forms available to the public free of charge, which may be completed online, for the purposes of:

Parties to the proceedings before the Office may also use:

The Office shall make the forms referred to in paragraph 1 available in all the official languages of the Union.

The calculation of a time limit shall start on the day following the day on which the relevant event occurred, either a procedural step or the expiry of another time limit. Where that procedural step is a notification, the event shall be the receipt of the document notified, unless otherwise provided for.

Where a time limit is expressed as one year or a certain number of years, it shall expire on the relevant subsequent year in the month having the same name and on the day having the same number as the month and the day on which the relevant event occurred. Where the relevant month has no day with the same number, the time limit shall expire on the last day of that month.

Where a time limit is expressed as one month or a certain number of months, it shall expire on the relevant subsequent month on the day which has the same number as the day on which the relevant event occurred. Where the relevant subsequent month has no day with the same number, the time limit shall expire on the last day of that month.

Where a time limit is expressed as one week or a certain number of weeks, it shall expire on the relevant subsequent week on the day having the same name as the day on which the said event occurred.

Where a time limit expires on a day on which the Office is not open for receipt of documents or on which, for reasons other than those referred to in paragraph 2, ordinary post is not delivered in the locality in which the Office is located, the time limit shall be extended until the first day thereafter on which the Office is open for receipt of documents and on which ordinary mail is delivered.

Where a time limit expires on a day on which there is a general interruption in the delivery of mail in the Member State where the Office is located, or, if and to the extent that the Executive Director has allowed communications to be sent by electronic means pursuant to Article 100(1) of Regulation (EU) 2017/1001, on which there is an actual interruption of the Office's connection to those electronic means of communication, the time limit shall be extended until the first day thereafter on which the Office is open for receipt of documents and on which ordinary mail is delivered or the Office's connection to those electronic means of communication is restored.

Where the Office finds of its own motion or pursuant to corresponding information provided by the parties to the proceedings that a decision or entry in the Register is subject to revocation pursuant to Article 103 of Regulation (EU) 2017/1001, it shall inform the affected party about the intended revocation.

The affected party shall submit observations on the intended revocation within a time limit specified by the Office.

Where the affected party agrees to the intended revocation or does not submit any observations within the time limit, the Office shall revoke the decision or entry. If the affected party does not agree to the intended revocation, the Office shall take a decision on the intended revocation.

Where the intended revocation is likely to affect more than one party, paragraphs 1, 2 and 3 shall apply mutatis mutandis. In those cases the observations submitted by one of the parties pursuant to paragraph 3 shall always be communicated to the other party or parties with an invitation to submit observations.

Where the revocation of a decision or an entry in the Register affects a decision or entry that has been published, the revocation shall also be published.

Competence for revocation pursuant to paragraphs 1 to 4 shall lie with the department or unit which took the decision.

As regards opposition, revocation and declaration of invalidity and appeal proceedings, the competent department or Board of Appeal may suspend proceedings:

At the request of both parties in inter partes proceedings, the competent department or Board of Appeal shall suspend the proceedings for a period which shall not exceed six months. That suspension may be extended upon a request of both parties up to a total maximum of two years.

Any time limits related to the proceedings in question, other than the time limits for the payment of the applicable fee, shall be interrupted as from the date of suspension. Without prejudice to Article 170(5) of Regulation (EU) 2017/1001, the time limits shall be recalculated to begin in full as from the day on which the proceedings are resumed.

Where appropriate under the circumstances of the case, the parties may be invited to submit their observations as regards the suspension or resumption of the proceedings.

Where proceedings before the Office have been interrupted pursuant to Article 106(1) of Regulation (EU) 2017/1001, the Office shall be informed of the identity of the person authorised to continue the proceedings before it pursuant to Article 106(2) of Regulation (EU) 2017/1001. The Office shall communicate to that person and to any interested third parties that the proceedings shall be resumed as from a date to be fixed by the Office.

Where, three months after the beginning of the interruption of the proceedings pursuant to Article 106(1)(c) of Regulation (EU) 2017/1001, the Office has not been informed of the appointment of a new representative, it shall inform the applicant for or proprietor of the EU trade mark that:

The time limits in force as regards the applicant for or proprietor of the EU trade mark at the date of interruption of the proceedings, other than the time limit for paying the renewal fees, shall begin again as from the day on which the proceedings are resumed.

Where there is more than one applicant and the application for an EU trade mark does not name a common representative, the first applicant named in the application having its domicile or principal place of business or a real and effective industrial or commercial establishment in the EEA, or its representative if appointed, shall be considered to be the common representative. Where all of the applicants are obliged to appoint a professional representative, the professional representative who is named first in the application shall be considered to be the common representative. This shall apply mutatis mutandis to third parties acting jointly in filing notice of opposition or applying for revocation or for a declaration of invalidity and to joint proprietors of an EU trade mark.

Where, during the course of proceedings, transfer is made to more than one person and those persons have not appointed a common representative, paragraph 1 shall apply. Where such an appointment is not possible, the Office shall require those persons to appoint a common representative within two months. If that request is not complied with, the Office shall appoint the common representative.

Employees who represent natural or legal persons within the meaning of Article 119(3) of Regulation (EU) 2017/1001, as well as legal practitioners and professional representatives entered on the list maintained by the Office pursuant to Article 120(2) of Regulation (EU) 2017/1001, shall file a signed authorisation with the Office for insertion in the files pursuant to Article 119(3) and Article 120(1) of Regulation (EU) 2017/1001 only where the Office expressly requires it or where there are several parties to the proceedings in which the representative acts before the Office and the other party expressly asks for it.

Where it is required, pursuant to Article 119(3) or Article 120(1) of Regulation (EU) 2017/1001, that a signed authorisation be filed, such an authorisation may be filed in any official language of the Union. It may cover one or more applications or registered trade marks or may be in the form of a general authorisation authorising the representative to act in respect of all proceedings before the Office to which the person giving the authorisation is a party.

The Office shall specify a time limit within which such an authorisation shall be filed. Where the authorisation is not filed in due time, proceedings shall be continued with the represented person. Any procedural steps taken by the representative other than the filing of the application shall be deemed not to have been taken if the represented person does not approve them within a time limit specified by the Office.

Paragraphs 1 and 2 shall apply mutatis mutandis to a document withdrawing an authorisation.

Any representative who has ceased to be authorised shall continue to be regarded as the representative until the termination of that representative's authorisation has been communicated to the Office.

Subject to any provisions to the contrary contained therein, an authorisation shall not automatically cease to be valid vis-à-vis the Office upon the death of the person who gave it.

Where the appointment of a representative is communicated to the Office, the name and the business address of the representative shall be indicated in accordance with Article 2(1)(e) of Implementing Regulation (EU) 2018/626. Where a representative who has already been appointed appears before the Office, that representative shall indicate the name and the identification number attributed to the representative by the Office. Where several representatives are appointed by the same party, they may, notwithstanding any provisions to the contrary in their authorisations, act either jointly or singly.

The appointment or authorisation of an association of representatives shall be deemed to be an appointment or authorisation of any representative who practises within that association.

Pursuant to Article 120(5) of Regulation (EU) 2017/1001, the entry of a professional representative shall be deleted automatically:

The entry of a professional representative shall be suspended of the Office's own motion where the representative's entitlement to represent natural or legal persons before the Benelux Office for Intellectual Property or the central industrial property office of a Member State as referred to in the first sentence of Article 120(2)(c) of Regulation (EU) 2017/1001 has been suspended.

Where the conditions for deletion no longer exist, a person whose entry has been deleted shall, upon request, accompanied by a certificate pursuant to Article 120(3) of Regulation (EU) 2017/1001, be reinstated in the list of professional representatives.

The Benelux Office for Intellectual Property and the central industrial property offices of the Member States concerned shall, where they are aware of any relevant events referred to in paragraphs 1 and 2, promptly inform the Office thereof.

Without prejudice to Article 193 of Regulation (EU) 2017/1001, where an international registration designating the Union is dealt with as an EU collective mark or as an EU certification mark pursuant to Article 194(1) of Regulation (EU) 2017/1001, a notification of an ex officio provisional refusal shall also be issued in accordance with Article 33 of Implementing Regulation (EU) 2018/626 in the following cases:

Notice of amendments to the regulations governing the use of the mark pursuant to Articles 79 and 88 of Regulation (EU) 2017/1001 shall be published in the European Union Trade Marks Bulletin.

Where an opposition is entered against an international registration designating the Union pursuant to Article 196 of Regulation (EU) 2017/1001, the notice of opposition shall contain:

Article 2(1), (3) and (4) and Articles 3 to 10 of this Regulation shall apply for the purposes of opposition proceedings relating to international registrations designating the Union, subject to the following conditions:

Where the notice of opposition is filed before the expiry of the period of one month referred to in Article 196(2) of Regulation (EU) 2017/1001, the notice of opposition shall be deemed to have been filed on the first day following the expiry of the period of one month.

Where the holder of the international registration is obliged to be represented in proceedings before the Office pursuant to Article 119(2) of Regulation (EU) 2017/1001, and where the holder of the international registration has not already appointed a representative within the meaning of Article 120(1) of Regulation (EU) 2017/1001, the communication of the opposition to the holder of the international registration pursuant to Article 6(1) of this Regulation shall contain a request for the appointment of a representative within the meaning of Article 120(1) of Regulation (EU) 2017/1001 within a time limit of two months of the date of notification of the communication.

The opposition procedure shall be stayed where an ex officio provisional refusal of protection is issued pursuant to Article 193 of Regulation (EU) 2017/1001. Where the ex officio provisional refusal has led to a decision to refuse protection of the mark which has become final, the Office shall not proceed to a decision and refund the opposition fee and no decision on the apportionment of costs shall be taken.

Where a notice of opposition against an international registration is entered at the Office pursuant to Article 196(2) of Regulation (EU) 2017/1001, or where an opposition is deemed to have been entered pursuant to Article 77(3) of this Regulation, the Office shall issue a notification of provisional refusal of protection based on an opposition to the International Bureau of the World Intellectual Property Organisation (‘the International Bureau’).

The notification of provisional refusal of protection based on an opposition shall contain:

Where the opposition is based on a trade mark application or registration, the notification referred to in paragraph 2 shall contain the following indications:

Where the provisional refusal relates to only part of the goods or services, the notification referred to in paragraph 2 shall indicate those goods or services.

The Office shall inform the International Bureau of the following:

Where more than one provisional refusal has been issued for one international registration pursuant to Article 193(2) of Regulation (EU) 2017/1001 or paragraph 1 of this Article, the communication referred to in paragraph 5 of this Article shall relate to the total or partial refusal of protection of the mark pursuant to Articles 193 and 196 of Regulation (EU) 2017/1001.

Where the Office has not issued an ex officio provisional notification of refusal pursuant to Article 193 of Regulation (EU) 2017/1001 and no opposition has been received by the Office within the opposition period referred to in Article 196(2) of Regulation (EU) 2017/1001 and the Office has not issued an ex officio provisional refusal as a result of the third party observations submitted, the Office shall send a statement of grant of protection to the International Bureau indicating that the mark is protected in the Union.

For the purposes of Article 189(2) of Regulation (EU) 2017/1001, the statement of grant of protection referred to in paragraph 1 of this Article shall have the same effect as a statement by the Office that a notice of refusal has been withdrawn.

This Regulation shall enter into force on the twentieth day following that of its publication in the Official Journal of the European Union.

It shall be applicable from the date of entry into force referred to in paragraph 1, subject to the following exceptions: