Amendments to the Implementing Regulation and the Fees Regulation adopted – Amendments enter into force on 25 July 2005
On 29 June 2005 , the European Commission adopted
amendments to the Regulation implementing the Community trade mark
Regulation and amendments to the Regulation on the fees payable
to the OHIM.
The new Regulations
Regulation (EC) No 1041/2005 of 29 June 2005 amending Regulation
(EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on
the Community trade mark was published in the Official Journal
of the European Union of 5 July 2005 (OJ L 172, p. 4). On the same
date, the Commission adopted Commission
Regulation (EC) No 1042/05 of 29 June 2005 amending Regulation (EC)
No 2869/95 on the fees payable to the Office for Harmonization in
the Internal Market (Trade Marks and Designs) (OJ L 172, p.
22). The amendments enter into force 20 days after their publication,
i.e. on 25 July 2005 .
Background to the amendments
The amendments to these Regulations must be seen
in the context of the amendments to the Community trade mark Regulation
made by Council
Regulation (EC) No 422/2004 of 19 February 2004 amending Regulation
(EC) No 40/94 on the Community trade mark . Some of those amendments
entered into force immediately. Several amendments concerning the
organisation of, and procedures before, the Boards of Appeal of
the Office required changes to the Rules of Procedure of the Boards
of Appeal. These have been implemented by Commission Regulation
No 2082/2004 of 6 December 2004 (published in OJ OHIM 2005, 446;
see also Information from the Commission, published in OJ OHIM 2005,
A number of other amendments brought about by Regulation
No 422/2004 required implementing rules and are only now coming
into force together with the recent amendment to the Implementing
Regulation and the Fees Regulation (see Information
from the Commission, referred to above ).
The recent amendments to the Implementing Regulation
go beyond merely implementing Regulation No 422/2004 and contain
a number of other procedural improvements. This is in order to simplify
the proceedings, remove doubts and pitfalls, and to benefit from
the OHIM's 9 years of experience in applying the CTM Regulation.
How to obtain more information
For the benefit of users, the Office has established
version of the Implementing Regulation and Fees Regulation valid
as from 25 July 2005 . The Office is also reviewing all its Examination
Guidelines to adapt them to the revised procedures. As a first step,
you can find on our website Guidelines on "General Provisions on Proceedings before
the Office" and on "Changes in an application or registration",
including divisions of CTM applications and registrations.
workshops and information sessions are being organised.
Further information will follow soon.
Parties to proceedings before the Office should familiarise
themselves with the new rules.
Summary of the most important changes
What are the most significant changes
brought about by the revised Implementing Regulation?
1. Representation of the trade mark
The new rules make it clear that for a mark consisting
of a colour per se, an indication of an international recognised
colour code is optional. In fact, the Office recommends indication
of such a code but failure to do so will not constitute a ground
for refusal. Furthermore, provision will be made for the furnishing
of electronic sound files as an attachment to a CTM application
for a sound mark filed by e-filing.
2. Division of an application or registration
The new rules implement Articles 44a and 48a CTMR
(as introduced by Regulation No 422/2004). This allows for the division
of a CTM application or registration. The division will be subject
to a fee of €250. Certain periods or procedural situations
are defined where a division is not admissible. In particular, it
is not possible to divide goods and services that are subject to
an opposition. When an opposition is pending, only those goods and
services can be divided off which are not contested by the opposition.
3. Opposition procedure
Rules 15–22 governing the opposition procedure have
been reframed completely.
One objective was to put the provisions into a logical
and chronological order of proceedings, and to clarify a number
of formalities regarding which contradictory decisions taken at
higher instances had caused uncertainty.
Another aim was to simplify the procedure whilst
still retaining the basic features and procedural steps of the opposition
A new feature of the procedure is the immediate notification
of all oppositions even prior to completion of the admissibility
check. Once the opposition has been found admissible, the cooling-off
period is set in motion, and the parties are invited to file their
evidence and arguments, in the same way as has been done up to now.
Another new feature is the limitation of the cooling-off
period to a maximum of 24 months.
The time limits for filing translations of documents
have been reinforced. An opposition which is not filed in the first
or second language of the application must be translated within
one month (as is the case now) but if that is not done, the Office
will not open a further time limit for doing so. All documents to
be filed in the course of the proceedings must be translated into
the language of the proceedings within the time limit applicable
for the filing of the originals. An exception continues to apply
for documents in support of proof of use.
Translations must faithfully reproduce the structure
and contents of the original and must not be confined to excerpts
which the party considers “relevant”.
A new rule makes it clear that the Office will disregard
all facts and evidence that are filed after expiry of the time limits
It is also clarified that it is not the task of the
Office to point out which documents are missing or could be filed
by the parties once the opposition is admissible. This is important
for the proof of the existence and validity of earlier rights. Private
databases are not accepted as means of proof of the earlier right.
If the applicant requests proof of use, he must do
so within the first time limit set for him to reply to the opposition.
As from 25 July 2005 , the transfer fee will be abolished.
The OHIM considers it in the interest of the CTM system and of third
parties that trade mark owners request the recordal of transfers.
No proof of the licence is needed if the request
for recordal of the licence is filed or co-signed by the trade mark
owner himself. However, if the request for recordal is filed or
signed exclusively by the licensee, proof of the licence or the
CTM owner's consent is necessary.
The changes to the conversion procedure, in particular
the rule that it is the OHIM that decides on the admissibility of
a conversion request, have already been in force since March 2004.
However, it will now be clarified that, when a refusal is based
on a meaning of the trade mark in a particular language (without
any other qualification as to the territory to which the objection
applies) a conversion is refused under Article 108(2) only in respect
of those Member States where that language is an official language.
7. Notifications by fax
The new provisions clarify that the OHIM has a choice between fax
and post as means of notification. This principle has already been
confirmed by the Court of First Instance in the case "Pan Spezialitäten"
(Joined Cases T-380/02 and T-128/03). Furthermore, it is clarified
that a fax transmitted by a party through a computer work station
(a so-called electronically generated fax) is an electronic transmission
that does not require any signature.
8. Use of registered mail
Decisions subject to an appeal will continue to be
notified by registered letter with advice of delivery (if the OHIM
decides not to send the document by fax). However, all other documents
will be notified by ordinary mail, which is deemed to have been
effected on the 10th day following that of its posting. The category
of registered letter without advice of delivery disappears. This
means that although, in the future, more communications will be
sent by ordinary mail, the addressees of these communications will
benefit from an additional period before a document is deemed to
have been received.
9. Extensions of time limits
In future, postal strikes in the Member States of
the EC other than Spain will be irrelevant for the expiry of time
limits. If an applicant or representative becomes aware of a postal
strike in his own country, he should send the document via other
means (fax or private messenger services).
Professional representatives need not file an authorisation
(this merely confirms current OHIM practice).
11. Continuation of proceedings
Continuation of proceedings (continuing proceedings
after an unobserved time limit provided the omitted act has been
completed at the time the request is made and that payment of a
fee of 400 euro has been effected) becomes possible. The request
must be made within two months following expiry of the unobserved
time limit. Certain time limits are excluded from this possibility.
The formalities for a renewal have been reduced to
the strict minimum.
13. Transitional Rules
There are no special transitional rules regarding
these amendments. This means that the amendments apply to all pending
cases should the situation governed by the respective rule arise.
In other words, the new rules apply to situations that arise in
the future but cannot be applied retroactively.
For example, in future, a request to extend a cooling-off
period from 24 to 28 months (or from 30 to 36 months) will have
to be refused, regardless of whether the cooling-off period started
before July 2005. Similarly, a CTM applicant must request proof
of use together with his first observations if the time limit to
submit them starts after 25 July 2005 . Divisions of applications
or registrations and the possibility to apply for continuation of
proceedings become available as of 25 July 2005 . Likewise, as of
that date, no fee will be charged for requests for the recordal
Letters already sent out by the Office in the course
of the proceedings remain valid and will not be changed afterwards
if the legal basis for them changed after the letter was sent.
In many respects, the new rules merely confirm
Office practice and, for that reason, no transitional issues arise.
For example, the Office has, as a matter of course, disregarded documents
filed in an opposition procedure after expiry of the relevant time
limit set. In future, this practice will be based on new Rule 19(4)
of the Implementing Regulation.