ua no section in guidelines ua/no outcome kc · refuse in this respect, euipo follows the wipo...

UA NO Section in Guidelines UA/NO

Comment

Outcome KC

Comments

Hungary Section 8: Restitutio in Integrum Wording of Paragraph 3.

The CTMR and other parts of the Guidelines refer to the amount to be paid for restitutio as “fee”, which

is also the correct designation for official charges.

Suggestion for text

Restitutio in integrum is only available upon application to the Office and there is a fee to be paid.

Accept The KC accepted HPO's comment and changed the text as

follows: "… and it is subject to the payment of a fee."

Hungary Section 1: Proceedings In the second paragraph of point 2.2, reference to the participation in the search system should be more

precise.

Suggestion for text It should enumerate the participating offices. As from 1st January 2015, six national

offices take part in this optional search system and perform searches in their national registers: Czech

Republic, Denmark, Lithuania, Hungary, Romania and Slovakia.

Accept The KC accepted HIPO's comment, however, it will not cite the

participating countries in the Guidelines as these may change and

the Guidelines would need constant updates. Full information is

available on the Office's website. However, the KC had received

similar comments in previous revision cycle so it seems worth to

add a cross reference to the website.

Hungary Part B: Section 4: Absolute Grounds

for Refusal 7.1.f

2.7.1.2 Plant Variety Denominations

Suggestion for text We suggest omitting the cited part of the text as it does not belong to this chapter.

Plant variety names are considered to be descriptive by law that means they belong to the absolute

grounds for refusal implied in Art. 7(1)(c) CTMR {descriptive marks}.

Accept


for Refusal 7.1.g

‘ARCADIA’ case

Suggestion for text It should be pointed out that although ‘ARCADIA’ is not a protected geographical

indication, consumers (especially in Greece) may still have positive expectations since it is a Greek region

known for its wine production. As a result of that the mark ‘ARCADIA’ can be deceptive to the

geographical origin of the goods and therefore the list of goods and services shall be restricted to ‘wines

made in Greece’.

Refuse This is not the Office's practice.


for Refusal 7.1.g

2.8.1 – Examination of the deceptive character

“An objection should be raised when the list of goods/services is worded in such a way that a non-

deceptive use of the trade mark is impossible”

Suggestion for text

It is highly arguable that according to the OHIM’s practice an objection is only raised where the non-

deceptive use of a mark is impossible. According to the HIPO’s standpoint, the term ‘sufficiently serious

risk’ covers the issue where deceptive use of the mark is possible. Therefore when the list of goods and

services is worded in such a broad way that a non-deceptive use is possible, such as it was clarified in

respect of ’KODAK VODKA’ sign, an objection should still be raised in order to assure that the sufficiently

serious risk of the mark being deceptive (even if it only exists in part(s) of the listed goods/services) does

not exist.

Refuse This is not the Office's practice.

Hungary Section 4: Rights under Article 8(4)

CTMR

We recommend the slight modification of the following sentence, since the first part has an erratum, and

the second half is clearer with the suggested correction. The original sentence is the following: “As far as

the of the use of the sign is concerned, in general, neither the territory of a city alone, even a big one, is

of more than mere local significance, and nor is a regional district or province.”

Suggestion for text

As far as the use of the sign is concerned, in general, neither the territory of a city alone – even a big one

–, nor a regional district or province is of more than mere local significance.

Accept Comment is appreciated. Text will be amended.

Hungary Section 5: Trade marks with

reputation, Article 8 (5) CTMR

2.1.2 Relationship between marks (Article 8(5) CTMR) with reputation and well-known marks (Article

8(2)(c) CTMR)

‘In practical terms, the threshold for establishing whether a trade mark is well-known or enjoys

reputation will usually be the same. ’

Suggestion for text

Although undoubtedly there is a substantial overlap between the two categories, we do not necessarily

agree that the threshold is the same for both. We would like the text to give more clarification and to give

the legal basis on this statement. Alternatively, we would appreciate reconsideration of this practice.

Refuse In this respect, EUIPO follows the WIPO Joint Recommendation

on well-known marks.

Hungary Section 5: Trade marks with


3.1.2.4 Relevant territory

‘The Court has clarified that for an earlier Community trade mark reputation throughout the territory of a

single Member State may suffice.’

It would be useful to further elaborate on the cited part by inserting judgement of 03/09/2015, C-125/14,

‘be impulsive’ as an important source of relevant case law which clarified the application requirements of

this particular ground for refusal.

Suggestion for text

We suggest adding the following part of judgement of 03/09/2015, C-125/14, ‘be impulsive’:

‘... if the earlier Community trade mark has already acquired a reputation in a substantial part of the

territory of the European Union, but not with the relevant public in the Member State in which

registration of the later national mark concerned by the opposition has been applied for, the proprietor

of the Community trade mark may benefit from the protection introduced by Article 4(3) of Directive

2008/95 where it is shown that a commercially significant part of that public is familiar with that mark,

makes a connection between it and the later national mark, and that there is, taking account of all the

relevant factors in the case, either actual and present injury to its mark, for the purposes of that provision

or, failing that, a serious risk that such injury may occur in the future (para. 34).’

Next Round As this case concerns national proceedings, EUIPO will reflect on

the importance of this Judgment for the proceedings before it.

Hungary Part M: International marks In the first paragraph of point 2.1, the list should be added one more point

Suggestion for text

• the list of goods and services must be identical to or narrower than the list contained in the

specification of the basic mark

Refuse Refused as this section includes a summary of what is necessary

to file an IR with us, the details are provided later on. Clarify that

this section should include the only requirements needed for

OHIM.

Hungary Part M: International marks Where no provisional refusal has been issued by OHIM before the start of the opposition period (six

months after republication), the ex Officio examination shall be considered concluded. OHIM will,

therefore, send an interim status of the mark to WIPO.

Suggestion for text

The fifth paragraph of that page states the same meaning as the second paragraph.

Accept Deleted the fifth paragraph (as it says the same as the second

one)

Hungary Examination of Applications for

Registered Community Designs

It is not clear why the deleted text specifying what kind of information suffices for the purpose of

allocating a filing date has to go. The new element concerning the ID number, if any, is clearly important

to add. However, perhaps that does not exclude maintaining the existing text which might still be helpful

for first applicants with no ID number.

Suggestion for text

Keep the deleted sentence. Delete “It must enable the Office to identify the applicant.”, as it adds no

clarification to “information identifying the applicant”. Keep the rest of the new text.

Accept



The first paragraphs of this section contains the definition of “complex product” in accordance with

Article 3(c) CDR. This is a quotation from a legal instrument, so it would seem that corrections changing

“which” into “that” should be avoided.

Suggestion for text

Delete proposed amendments and include the definition taken from Article 3(c) CDR as it actually reads.

Accept



In the first paragraph of this section, it is not clear why the latter part of the reference to the “Guidelines

for examination of Community trade marks” has been deleted. In the Guidelines for the examination of

Community designs there is no Part A, General Rules, Section 3 as indicated, so the amendment renders

the reference difficult to follow.

Suggestion for text

In the second line, re-insert “for examination on Community trade marks”.

Accept The reference will be updated.

SwitzerlandSection 3: Classification 4.1.1. General Principles

General question on practice of OHIM:

“A term may be part of the description of goods and services in several different classes; it may be clear

and precise in a particular class without further specification, because its natural and usual meaning and

the class number leave no doubts as to the scope of protection.”

Do you take the class number into account if a term can be classified in several different classes? Does

the class number lead to precision so that there is no further specification needed?

Example: “screws” - do you accept “screws” without specification in class 6 as well as in class 20 or must

the term be specified in regard to the material (screws of metal (6) or screws not of metal (20))?

Out of Scope Where reasonably applicable, the Office understands the class

number as being indicative of the characteristics of the goods or

services, such as the predominant material, the main purpose or

the relevant market sector, considering at the same time the

natural and usual meaning of each term. Each term is assessed in

connection with the class it is applied for, the classification

system being a guide not only to determining the scope of

protection but also to identifying competition. In this regard, the

Office would see the term “screws” applied for in Class 6 as

necessarily being mainly made of common metals, and only of

these, Class 6 not containing screws of any other materials.

SwitzerlandSection 3: Classification 5.3 Amendments

General question on practice of OHIM:

“A restriction by the addition of ‘all the aforementioned goods, excluding…’ or ‘all the previously

mentioned services, only with regard to…’ to the end of the specification within a class will be accepted as

long as it can reasonably be applied to at least one product or service it refers to in that class. At the

same time the criteria mentioned above have to be observed.”

Does that mean, that a restriction such as “books, magazines, gel roller pens; all the aforementioned

goods, excluding goods on the issue of penguins” would be accepted?

Out of Scope With regard to limitations, the Office allows similar formulations,

given that the line between the actual possibility and

impossibility of putting a limitation into practice is in most cases

very obvious and does not need to be seriously questioned. Even

if allowed for the entire wording, the limitation could in practice

indeed only be applicable to some of the goods or services,

provided that at least one term referred to can effectively be so

limited. Where in practice evidently not applicable, the goods or

services would in fact not be affected by such a limitation.

SwitzerlandSection 3: Classification Blogging services

Example:

Class 39: providing travel blogs

Must this service not be specified and classified in class 41, in analogy to „providing on-line electronic

publications, not downloadable” (Nice 410099)?

Out of Scope The Office sees provision of blogs on a certain topic rather in

analogy to providing information and thus classifiable in

accordance with the subject matter of this information. The

Office does not see provision of blogs as being necessarily

connected with publishing services, unless this is clearly indicated

in the term applied for.

SwitzerlandSection 3: Classification GPS systems — location, tracking and navigating

Examples Class 38:

Tracking of mobile telephone via satellite signals

Location of mobile telephones via satellite signals

Do these services not belong to class 45? Searching for a missing item or locating a missing person via

GPS?

The swiss IP Office would accept a term such as

« cl. 45 : localisation de personnes portées disparues par le biais de systèmes mondiaux de localisation

(GPS) »

Or classify the above-mentioned examples in analogy to “tracking of stolen property” or “missing persons

investigation, missing persons location information”.

Out of Scope The actual service of tracking or location of mobile phones

through the satellite system would be provided by the owners of

these satellites, the telecommunication companies. Even for the

purpose of criminal investigations, the police would request the

cooperation of the telecommunication service provider in order

to locate a mobile phone. Therefore, the Office considers that

these tracking and locating services are proper to class 38.

SwitzerlandSection 3: Classification Internet services, on-line services

Example Class 38:

Internet provider services

Is this term precise enough? A provider also offers services of other classes, e.g. hosting services (cl. 42).

Accept The KC has amended the text to read "Internet service provider

services"

SwitzerlandSection 3: Classification Manufacturing services

Just for your information:

The Swiss IP Office changed its practice concerning the service “manufacturing service” by 1st of January

2016 (you might remember our ongoing questions and discussions in this regard ;-))

https://www.ige.ch/fileadmin/user_upload/Marken/e/lps/2015/Text_Praxisaenderung_Kl40_EN.pdf

The service is accepted under the following conditions:

1)The manufacturing must be carried out "to the order of a customer"

2)The manufacturing must be adapted to the needs of the customer, meet the requirements of the

customer or be carried out to the specification of the customer

3) The goods manufactured must be indicated

Out of Scope The KC thanks you for your contribution and for providing

information on your practice, which we find very useful.

SwitzerlandPart B: Section 4: Absolute Grounds

for Refusal 7.1.j+k

Part B, Section 4, 2.7.2, Signs with a blasphemous content: in my view, the relevant public to check

whether a sign has got a blasphemous content is the ordinary member of the religious concerned. It

seems to me that this principle could be highlighted more clearly in the guidelines. In the draft of the

guidelines, the ordinary citizen is mentioned, only.

Next Round this comment was filed late, as an additional comment (23/03, to

KCC on 5/4)

ITMA Section 2: Substantive provisions New examples: Cases R 946/2007-2, R 1151/2007-2 and R 1736/2010-2. These are decisions of the OHIM

Boards of Appeal and therefore not binding precedents. As OHIM Examiners are considered to be bound

by the Guidelines, inclusion of these decisions as examples is misleading.

Suggestion for text

ITMA suggests that Examples 4.5.1.2. "Examples accepting the claim of consent to registration" be

removed or that wording is added to make it clear these decisions are not binding on OHIM Examiners.

Refuse It is common practice to quote BoA decisions in the GL.

ITMA Section 3: Classification Amended wording: Using these preapproved terms will facilitate a smoother the trade mark registration

process.

This change implies that the pre-approved terms must be used, when this is not the case.

Suggestion for text

ITMA suggests that the wording remains "Using these preapproved terms will facilitate a smoother trade

mark registration process".

Accept The KC has reverted to the original wording, as suggested.

ITMA Section 3: Classification "Wellness services" - We agree that this term is vague and requires specification in order to comply with

the classification requirement of clarity. Adding additional wording to "wellness services" does not

provide this clarity, however.

By way of example, does the term "wellness services for the purpose of beauty care" provide wider

protection than "beauty care services"? If so, inclusion of "wellness services" means that the overall term

is still too vague. If not, inclusion of "wellness services" is superfluous and the term which has proper

clarity would be simply "beauty care services".

Suggestion for text

ITMA suggests that the term "wellness " is considered to be a word that cannot be properly defined. As

such, it should not be used within terms which are intended to clarify the services for which protection is

sought.

Refuse Although superfluous, so too is anything preceded by “namely”. It

is acceptable for classification purposes provided it is specified

sufficiently.

ITMA Section 1: Means of communication,

time limits

The removal of the Office opening hours "(Monday to Friday, 08:30 - 13:30 and 15:00 - 17:00)". These are

not standard office opening hours, so it is very important that the Office's opening hours are clearly

specified in the Guidelines to avoid potential confusion.

Suggestion for text

ITMA suggests that the wording is retained.

Accept The KC accepted the comment from ITMA. Although the opening

hours will not be retained, the KC decided to introduce a

reference to the Office's website for further clarification.

ITMA General observation During our review we have also noticed several typos in the draft Guidelines. We have not included

comments on these in the feedback form, as these are not substantive issues and we assume OHIM will

be amending these in any event.

As always, we very much appreciate the opportunity to provide the Office with feedback and suggestions

on behalf of our members.

Accept We are in the process of correcting all the typos of the drafts as

we spot them.

AIM General observation Thank you for requesting comments on WP2. As we have previously said, our members do not have the

resources to be able to make such detailed analysis on texts that will shortly be changed following the

entry into force of the Guidelines as amended for the legal reform. Therefore, although we are always

keen to assist, we will not be able to submit a response on this occasion.

Accept

AIPPI Designs EXA Comment: This document provides good guidelines for rights holders. We, as users, are very satisfied

with the system, particularly when we receive timely notice of, and the opportunity to correct any

deficiencies.

Out of Scope

ECTA Section 2: General principles to be

respected in proceedings

(ES) La Oficina puede utilizar hechos notoriamente conocidos como base de su razonamiento. Hechos

notoriamente conocidos son aquellos que seguramente conozca todo el que haya adquirido una

experiencia práctica general de la comercialización de bienes de consumo y, en particular, los

consumidores de dichos bienes.

(EN) The Office can use facts that are a matter of common knowledge as a basis for its reasoning. Well-

known facts are those that are likely to be known by anyone or may be learnt from generally accessible

sources or those that are likely to be known by anyone with general practical experience of marketing

consumer goods and in particular by the consumers of those goods.

This issue entails some ambiguity in the versions in both these languages , chiefly on account of the use of

the words “seguramente” and “likely”, respectively, which do not appear to be the most apposite terms

when dealing with a prerogative of the Office that comes up against the right of defence. It might be

appropriate to alter this wording to more narrowly specify the Office's discretion in basing decisions on

well-known facts.

Suggestion for text

Change “seguramente” to “muy probablemente”

Change “likely to be” to “very likely”

Accept The KC agreed to ECTA's comment and amended the EN and ES

versions as suggested. The DE, FR and IT versions have been

checked but did not need any change.

ECTA Part M: International marks Article 1.1 of new Regulation (EC) No. 2015/2424 on the European Union trade mark, which takes effect

next 23 March 2016, provides that the "Community trade mark" shall now be called the "European Union

trade mark".

It should be noted that "Community trade mark" is still used to refer to the "European Union trade mark"

throughout the text.

Suggestion for text

Change all references to “Community trade mark” in the document to “European Union trade mark”.

Similarly, change all the abbreviations set forth in the document, such as “CTMR” (Community Trade

Mark Regulation) to “EUTMR” (European Trade Mark Regulation) and “CTM” with “EUTM”.

Out of Scope These amendments were carried out within the context of the

legal reform guidelines which will be available as from

23/03/2016. As this workpackage of the Guidelines was originally

drafted based on a version of the Guidelines prior to the legal

reform, the 'old' quotations and references were still visible.

These will be amended when the Guidelines goes into production

in July 2016..

ECTA Part M: International marks Article 2.1 of new Regulation (EC) No. 2015/2424 on the European Union trade mark, which takes effect

next 23 March 2016, provides that the "Community Trade Mark Office" shall now be called the "European

Union Intellectual Property Office".

Suggestion for text

Change all references to “Office for Harmonization in the Internal Market” in the document to “European

Union Intellectual Property Office”. Similarly, change all the abbreviations set forth in the document, such

as “OHIM” to “EUIPO”.







in July 2016..

ECTA Part M: International marks Article 147.4 of Regulation (EC) No. 2015/2424 on the European Union trade mark provides that “The

filing of an international application shall be subject to the payment of a fee to the Office. Where the

international registration is to be based on an EU trade mark once it is registered, the fee shall be due on

the date of registration of the EU trade mark. The application shall be deemed not to have been filed until

the required fee has been paid. Where the fee has not been paid, the Office shall inform the applicant

accordingly. In the event of electronic filing, the Office may authorise the International Bureau to collect

the fee on its behalf.”

We think it would be a good idea to address this point briefly in the Guidelines so that users will be aware

that for electronic filings, the EUIPO may authorize WIPO to collect this fee where it has not been paid.

Suggestion for text

Add the following paragraph to section 2.1.2.1 Handling Fee: "Where the fee has not been paid, the

Office will notify the applicant accordingly". In the event of electronic filing, the Office may authorise the

International Bureau to collect the fee on its behalf."

Refuse We don’t have electronic filing yet. Once it is available we will

include a specific mention in the Guidelines

ECTA Part M: International marks Article 147.3 of Regulation (EC) No. 2015/2424 on the European Union trade mark provides that “Where

the international application is filed in a language other than one of the languages allowed under the

Madrid Protocol for the filing of international applications, the applicant may provide a translation of the

list of goods or services and of any other textual elements forming part of the international application in

the language in which the international application is to be submitted to the International Bureau

pursuant to paragraph 2. If the application is not accompanied by such translation, the applicant shall

authorise the Office to include that translation in the international application. Where the translation has

not yet been established in the course of the registration procedure for the EU trade mark application on

which the international application is based, the Office shall, without delay, arrange for the translation”

Nothing is said about this in the relevant section of the Guidelines, and it would be useful for users to do

so.

Suggestion for text

It is proposed to add the following paragraph to section 2.1.3. Forms: "Where a translation of the goods

and services has not been submitted by the applicant, the Office shall be authorized to provide that

translation in the international application. Where the translation has not yet been established in the

course of the registration procedure for the EU trade mark application on which the international

application is based, the Office shall, without delay, arrange for the translation."

Accept New paragraph inserted

ECTA Part M: International marks Users could find the term "narrower" in the next-to-last paragraph of section 2.1.3.2. BASIC MARK

confusing.

“The list of goods and services must be identical to or narrower than the list contained in the basic

mark(s) on the day the international application is filed”.

Suggestion for text

“The list of goods and services must be identical to or narrower otherwise included in the list contained in

the basic mark(s) on the day the international application is filed”.

Accept Amended "narrower" to read "otherwise included in" in section

2.1.3.2

ECTA Part M: International marks The second paragraph in this subsection provides that “Unlike international applications, subsequent

designations need to be filed through the office of origin but may be filed directly with WIPO. Directly

filing with WIPO is recommended for a speedier process.”

Article 149.1 of Regulation (EC) No. 2015/2424 on the European Union trade mark provides that "A

request for territorial extension made subsequent to an international registration pursuant to Article

3ter(2) of the Madrid Protocol may be filed through the intermediary of the Office." (…)”

We think a brief consideration of this point should be added to the second paragraph in section 2.2 of the

Guidelines to make it clear to users that the EUIPO is authorized to handle subsequent territorial

designations with WIPO.

Suggestion for text

The second paragraph in section 2.2 should be amended as follows:

“Unlike international applications, subsequent designations need to be filed through the office of origin

but may be filed directly with WIPO. Directly filing with WIPO is recommended for a speedier process.

However, if the user prefers, the EUIPO may be directed to take charge of submitting the application for

territorial extension to WIPO.”

Refuse It is highly recommended to file such requests directly at WIPO .

By filing them directly through WIPO's system the requests will be

dealt with in a much more efficient manner.

ECTA Part M: International marks Article 156.2 of the CTMR provided that “Notice of opposition shall be filed within a period of three

months which shall begin six months following the date of the publication pursuant to Article 152(1)”.

Regulation (EC) No. 2015/2424 on the Community trade mark changed that Article, hence the content of

the first paragraph in this section in the Guidelines needs to be updated.

Suggestion for text

It is proposed to amend the first paragraph of this section as follows:

“Opposition may be filed against the international registration between the sixth month and the ninth

month following the date of first republication. For example, if the first republication is on 15/02/2012,

the opposition period starts on 16/08/2012 and ends on 15/11/2012.”

“Notice of opposition shall be filed within a period of three months which shall begin one month

following the date of the publication. For example, if publication is on 15/02/2012, the opposition period

starts on 16/03/2012 and ends on 15/06/2012.”







in July 2016..

ECTA Section 3: Unauthorised filing by

agents of the TM proprietor (Article

8(3) CTMR)

Amendment to paragraph at the top of page (comments below) starting with ‘if the earlier right has been

acquired…’.

Suggestion for text

‘…If the earlier right has been acquired by trade mark is the subject of a registration, it is its priority date

that should be taken into account for assessing whether it precedes the contested application, whereas if

it is a user -based right, the relevant conditions for protection through use must have been fulfilled before

the filing date (or if appropriate, the priority date) of the CTM contested application. In the case of earlier

well-known marks, the mark must have become well -known by the time the CTMA is applied for before

the filing or priority date of the contested application.

Accept The paragraph will be redrafted so that it is clearer.



8(3) CTMR)

The references for Decision no. 4103C and B26759 do not seem consistent with other references - not

sure why the reference to the name of the case has been removed – this is also the case on pages 5-7, 9,

13, 14, 17 and 21.

Suggestion for text

Ensure consistency

Accept Comment appreciated. The Office will strive for consistency.



8(3) CTMR)

The references for Decision no. 4103C and B26759 do not seem consistent with other references - not

sure why the reference to the name of the case has been removed – this is also the case on pages 5-7, 9,

13, 14, 17 and 21.

Suggestion for text

Ensure consistency

Accept



8(3) CTMR)

Amendment to case commentary (B167926)

Suggestion for text

‘In this case, it was considered that less than three months after the expiry of a contractual relationship,

such as a license agreement, is a period within which it was still considered that the fiduciary relationship

between the parties exists, and as such, imposes (…)’.

Accept Text to be amended.



8(3) CTMR)

Amendment to third bullet point starting ‘when the goods and services in conflict…’.

Suggestion for text

‘(…)’guaranteed’ by the opponent, and which that it would have been reasonable for the opponent to

market them, given in view of the goods and services (…).

In addition, there should be a closed bracket at the end of ‘WOUXUN/WOUXUN.

Accept Bracket to be added.

ECTA Section 5: Trade marks with


In the second paragraph under 3.1.2.4, it is stated: ‘It is sufficient if reputation exists (…)’. The word ‘a’

has been omitted between ‘if’ and ‘reputation’.

Suggestion for text

‘It is sufficient if a reputation exists (…)’.

Out of Scope for proofreading



The following sentence inserted at the end of the last paragraph on page 18 should be rephrased or

deleted entirely, because in the present form, it does not make any sense:

“They need not necessarily all need to be fulfilled to reach the conclusion that the mark enjoys

reputation.”

The reference is relating to the word “factors”, but in fact rather seems to correspond with requirements

(to be met/fulfilled), which however, have not been mentioned in this paragraph. The factors referred to

in this paragraph should be taken into consideration, but these factors (as opposed to requirements) are

not merely “fulfilled” and must be considered / weighed to come to a conclusion in the assessment of

reputation.

Suggestion for text

Delete the additional sentence “They need not necessarily all need to be fulfilled to reach the conclusion

that the mark enjoys reputation.”

Accept Sentence will be amended.



In the second paragraph of page 25, in the sentence

“Registration and use do not necessarily coincide; as the mark may have been put to actual use either

before or after it was filed.”

the comma (“,”) has been replaced by a semicolon (“;”). However, the comma should be restored,

otherwise the meaning of the sentence is altered (the second part refers to the first part and should thus

not be separated by a semicolon).

Suggestion for text

Restore the comma instead of the suggested semicolon, i.e. restore the sentence “Registration and use

do not necessarily coincide, as the mark may have been put to actual use either before or after it was

filed.”

Accept Comma should be restored.



The Guidelines already provide some examples for cases on evidence to be provided in connection with

promotional activities and other documentation on reputation of trademarks.

However, it would be a good idea, for the purposes of illustration, to include another sample case

providing explanations on the scope and amount of documentation required in order to establish that a

trademark is indeed having a reputation. It is suggested to include a reference to the following decision of

the Second Board of Appeal of the Office:

Decision of 3 March 2009 in case R 1178/2008-2 – BULGA /BVLGARI et al.

“[…]

19 The opponent has provided various pieces of evidence originating from outside sources, such as copies

of numerous articles from international magazines and newspapers and extracts from books, in addition

to evidence originating from itself. The opponent has also provided a copy from the website

http://bwnt.businessweek.com providing the list of the 100 Top Brands in 2006, showing that the

position of the ‘Bulgari’ trade mark in 2005 was 94th and that its value was estimated to be around USD 2

715 million.

20 The Board has carefully considered the material provided and accepts the claim that the earlier mark is

a very well-known mark for leather goods, perfumes, watches, jewellery and clothing. It is, in fact,

common knowledge that the mark is indeed a very famous brand name in a large part of the world.

Although Article 74(1) CTMR restricts the Board to the examination only of ‘facts, evidence and

arguments’ put before it by the two parties, it does not imply that the Board must be obtuse in the face

of the obvious. The weight of evidence required to support statements which are universally known to be

true need not be great (see decision of 4 February 2002 in Case R 7/2001-1, ASPIRWILLOW/ASPIRIN). In

the Board’s opinion, the evidence submitted with the notice of opposition is more than sufficient to

establish the fact that the earlier mark is a very well-known mark and therefore highly distinctive. […]”

Next Round KCRG will analyse the comment in depth in the next round of GL

revision.



In Point 3.1.4.4, the first sentence of the first paragraph contains a reference to Rule 22 (4) of the CTMIR:

“There is no direct indication in the Regulations as to which kind of evidence is more appropriate for

proving reputation, as for instance the one in Rule 22(4) CTMIR about evidence of use.”

In light of the upcoming changes under the trademark reform it is suggested to delete this reference (“as

for instance the one in Rule 22(4) CTMIR about evidence of use.”).

Suggestion for text

See above.

Accept



In Point 3.1.4.4 on page 34, the sentence

“In principle, samples of 1 000 – 2 000 interviewees are considered sufficient, provided they are

representative of the type of consumer concerned.”

has been deleted.

It is suggested to restate this sentence, because it is (i) correct and (ii) in line with the case law referred to

on the following page 35 (please see the reference to the Decision of the First Board of Appeal in case R

1345/2010 – 1 “Fukato Fukato [fig.]” on page 35).

Suggestion for text

See above.


revision.



In Point 3.1.4.4 on pages 38 and 39, the following sentence

“For example, if the evidence shows that the earlier registration for Trade Marks with Reputation, Article

8(5) CTMR which reputation is claimed covers a device, but in reality this device is used combined with a

verbal element, it would not be consistent to accept that the device by itself has a reputation.”

appears to be too strict and in contradiction with what is being said in one of the cases cited by way of

example on the next page of the Guidelines.

In reality, device trademarks will practically always be used in connection with a word element and rarely

completely isolated. The fact alone that a device is being used in combination with a verbal element

cannot render promotional material or other documents worthless for proving reputation.

Instead of the above sentence (which should either be deleted or rephrased) it should therefore rather be

pointed out that it is important to assess whether the device plays an independent distinctive role on the

product getup or on the advertising/promotional material or other evidence in question.

One of the decisions referred to in the sample cases on the next page of the Guidelines (see page 39

referring to the decision of the Fourth Board of Appeal in case R 1308/2010-4 ‘WM GRAND PRIX’) already

points in the same direction:

“[…] No evidence of use was submitted of the use of the trade mark GRAND PRIX in an independent way“

(emphasis added)

Suggestion for text

See above.


revision.



“Article 8(5) CTMR, like Article 8(1)(b) CTMR, is manifestly inapplicable if the General Court rules out any

similarity between the marks at issue (judgment of 20 November 2014, C-581/13 `GOLDEN BALLS/

BALLON D´OR´ para. 73).”

The proposed addition of the text about the applicability of Art, 8(5) and 8(1)(b), while relevant, seems

patched in straight from the decision, without coherence with the text of the Chapter. As currently

proposed, the text seems to imply (or could be understood as implying) that it would only apply to a

ruling of the Court, so it should not apply to decisions of the Office (at which the Guidelines are actually

directed). In light of the entire Chapter and for coherence of the text and avoiding any possible

misleading interpretations, the text could be rephrased as suggested below:

Suggestion for text

Article 8(5) CTMR, like Article 8(1)(b) CTMR, is manifestly inapplicable if any similarity between the marks

at issue is ruled out (judgment of 20 November 2014, C-581/13 `GOLDEN BALLS/ BALLON D´OR´ para. 73)

Accept Comment appreciated. Sentence will be amended.

ECTA Section 2: Substantive provisions Merely withdrawing an opposition unilaterally does not necessarily imply that the opponent consents to

the registration of the CTMA (decision of 14/10/2008, R 0946/2007-2 and R1151/2007-2, “VISION”, para.

26).

The word “necessarily” should be deleted as it already implies a weight that in general already a pure and

unilateral withdrawal of an opposition implies a consent, although the wording of para. 26 of the cited

decision does not include such an assessment. The first sentence of para. 26 does not refer to a pure and

unilateral withdrawal, but to a withdrawal in general.

Suggestion for text

A pure and unilateral withdrawal does not imply that the opponent consents to the registration of the

contested CTMA (decision of 14/10/2008, R 0946/2007-2 and R1151/2007-2, “VISION”, para. 26).

Accept Comment appreciated. The word 'necessarily' to be deleted.

ECTA Section 7: Revision We would rather maintain the previous version of paragraph 4

An appeal is well founded only if the contested first instance decision is replaced by a decision with the

opposite result or at least otherwise gives full relief to the claims of the appellant.

Suggestion for text

An appeal is well founded where the contested decision was incorrect.

Refuse The KC refused ECTA's comment because the KC decided to

clarify what is meant by an 'well founded' appeal. There are two

possible scenarios: a) the outcome of the decision was incorrect

and b) the decision contained errors but the outcome would not

change by the revision.

ECTA Section 1: Changes in a registration We do not see the reason why the mention regarding the submission of a declaration of surrender online

has been deleted.

Suggestion for text

If the declaration is submitted by electronic means, the indication of the sender’s name is deemed to be

the equivalent of a signature.

Refuse This sentence has been removed as the 'Guidelines, Part A,

General Rules, Section 1 'Means of Communication, time limits'

under Point 3.1.2, include the same text.

This mention applies to all proceedings (not only to Changes in a

Registration') and therefore it is appropriate to the 'General

Rules' section of the Guidelines only, to avoid repetition.

ECTA Section 1: Changes in a registration We wonder why it should not be possible to file one single application for alteration of several

applications/registrations. In addition, it should be possible electronically. For many other types of

amendments, such an approach is possible.

Suggestion for text

One single application for alteration may be filed for several CTM registrations, provided that both the

CTM proprietor and the element to be altered are the same in each case. However, the fee has to be paid

for each registration to be altered. Such an application can be submitted electronically.

Refuse The filing of a request for alteration for multiple filings is still

possible in paper format (not via e-filing tools), however in

practice it is not rarely workable as the conditions seldom apply

in an identical manner to multiple files (for example, that the

marks contain the same element, that needs to be altered in the

same way). Rule 25(5) CTMIR (currently incorporated into Article

48(4) EUTMR) still includes this as an option.

Concerning the insertion of the text as proposed "Such an

application can be submitted electronically." this has not been

accepted as this it is currently not possible online as the

electronic tools don't allow for this possibility. When using the

electronic tools, these requests must be submitted individually in

each file, therefore inserting the proposed text would be

contradictory to what is physically possible in the online tools.

ECTA Section 1: Changes in a registration We wonder why the fifth paragraph concerning the notification of a deficiency on the list of the divided

goods has been deleted.

Suggestion for text

The Office will notify the proprietor of any deficiency in this regard and will give the proprietor two

months to remedy the deficiency. If the deficiency is not remedied, the declaration of division will be

refused (Rule 25a(2)CTMIR).

Refuse As a general principle, if a request does not comply with all the

conditions the Office raises a deficiency granting a time limit in

order to remedy it. Therefore it is not necessary to refer in every

part to this workflow.

ECTA Section 1: Changes in a registration Deletion of paragraph 6.4.3 Harmonised seniority information.

Suggestion for text

Maintaining the previous paragraph 6.4.3 Harmonised seniority information.

Refuse This paragraph has been removed from this section of the

Guidelines, as it is incorporated in Part B, Examination, Section 2,

Formalities.

It is appropriate to contain this information in only one section of

the Guidelines only, to avoid repetition.

INTA Section 3: Classification Class 35 mentions many types of advertising, but the list seems outdated because it does not include new

technology. Therefore, the explanatory notes might be modified as shown below.

Suggestion for text …advertising material and production of commercials, including but not limited to

traditional media like radio and television, as well as new media such as the internet (e.g., advertising on

the internet for others and commercial information services via the internet), as they are services

provided …

Accept The KC has accepted the proposal with some changes in wording.

INTA Section 3: Classification The example “Communication by online blogs” should be deleted or explained more thoroughly.

“Communication by online blogs” is vague and could have different meanings based on the subject

matter. . Indeed, all blogs involve “communication,” but the subject matter could be very different (e.g.

travel blogs and business blogs both are “communication by online blogs,” but have very different subject

matter that should be clarified). On the other hand, “providing access to blogs” is correctly identified as a

class 38 service because it relates to the technical aspect or means of delivering communications services,

similar to providing access to the internet or telephone lines.

Suggestion for text

The type of blogs should be specified, e.g., travel blogs or business blogs. However, if the service is

“providing the means to access and communicate by online blogs,” which is a communications-type of

service, then class 38 would be correct.


INTA Section 3: Classification “Cases (and bags) adapted to carry or transport the product they are intended to contain are, in principle,

classified in the same class as the product they are adapted to carry. For instance laptop bags are proper

to Class 9”

“All non-adapted carrying bags are in Class 18.”

Both of these generally are accurate. However, there are items that might be considered “carrying bags”

that fall somewhere in between. To clarify, it might be useful to add the explanation given below.

Suggestion for text

For purposes of clarification, paper and plastic shopping bags are in class 16, garbage bags are in class 16,

and laundry bags are in class 22.


INTA Section 3: Classification “Design services are, as such, proper to Class 42.”

This term is vague because it could mean many different services, as indicated by the rest of this entry

itself (e.g., design of advertising and design of landscaping are completely different services in different

classes). As other examples of “design” having different meanings, designing bridges is very different from

designing jewellery.

Suggestion for text

“Design services” is not acceptable on its own because this could refer to a variety of fields that are very

different and belong in different classes. Therefore, the field of design must be specified.”

Refuse Design Services is indeed acceptable as such in class 42. This is a

Harmonised Database term accepted by all National Offices.

Furthermore it is acceptable as such by WIPO.

INTA Section 3: Classification Class 9: Computer software and hardware and associated manuals in electronic format sold as unit

therewith

Class 16: Manuals sold as a unit with computer software and hardware.

These seem inconsistent. The Class 16 example merely reverses the order of words which also could be

written to mirror the class 9 description, “Computer software and hardware and associated manuals in

print format sold as a unit.” However, this should not be in class 16, but class 9 because the primary

product is the computer, not the manual. On the other hand, if the printed manuals are sold separately,

they do belong in class 16 with other printed material. We would re-write the examples as shown below.

Suggestion for text Class 9: Computer software and hardware and associated manuals in electronic

format sold as unit therewith

Class 9: Computer software and hardware and associated manuals in printed format sold as unit

therewith

Class 16: Printed manuals sold separately for use in connection with computer hardware and software


INTA Section 3: Classification Protective Clothing

.. helmets worn by “…. American football players.”

Although “American” often is understood to mean the US, it also could be interpreted as any country in

North or South America.

Suggestion for text

… helmets worn by “…. football players in the United States.”

Refuse American Football constitutes in itself the name of a sport and

accordingly we consider that it is not analogous to the expression

‘United States Football”

INTA Part B: Section 4: Absolute Grounds

for Refusal 7.1.g

Issue(s) you wish to comment on Incomplete sentence

Suggestion for text First paragraph under “Reasoning” in chart reads:

‘meat’ is beef, even though it is not. However, meat in Class 29 also covers beef, meaning that non-

deceptive use is possible. The sign does not, therefore, incur an objection under Article 7(1)(g) CTMR.

The first sentence (underlined) appears to be incomplete.

Accept


for Refusal 7.1.j+k

Typographical error in redlining previous revisions

Suggestion for text The word “In” should be deleted at the beginning of the 3rd full paragraph, as follows:

In certain cases, the The sign could evoke in the consumers’ minds some impressions/expectations as to

the geographical origin of the goods or of the designer thereof and which that may not correspond to

reality.

Accept


for Refusal 7.1.g

Typographical error in redlining previous revisions

Suggestion for text The word “Whereas” and the lower-case “i” right before “In” should be deleted at the

beginning of the paragraph, as follows:

Whereas in In examining a trade mark under Article 7(1)(g) CTMR an examiner must confine the

assessment to the meaning conveyed by the sign vis-à-vis the goods/services concerned (meaning that

the way the sign is actually used is of no relevance),). However, under Article 51(1)(c) CTMR the way the

sign is used is decisive, given that according to this provision a registered CTM may be declared revoked

if, in consequence of the use made of the sign by its proprietor or with their consent, the trade mark is

liable to mislead the public, particularly as to the nature, quality or geographical origin of the

goods/services concerned.

Accept

INTA Section 3: Unauthorised filing by


8(3) CTMR)

Amendment of the fourth sentence of the first paragraph starting by: “ If the earlier mark has been

acquired by registration, it is its priority date that should be taken into account for assessing whether it

precedes the application, whereas if it is a user-based right, the relevant conditions for protection

through use must have been fulfilled before the filing date of the CTM Application...”

Suggestion for text

“ If the earlier mark has been acquired by registration, it is its priority date that should be taken into

account for assessing whether it precedes the contested application, whereas if it is a use-based… right,

the relevant conditions for protection through use must have been fulfilled before the filing date (or

priority date, if appropriate) of the CTM contested Application...….”

Accept Sentence will be amended.

INTA Section 3: Unauthorised filing by


8(3) CTMR)

There should be a closed bracket at the end of the case referred in the third sentence

–WOUXUN/WOUXUN.

Accept Bracket will be added.

INTA Section 4: Rights under Article 8(4)

CTMR

Nevertheless, the broad scope of earlier rights to be relied upon in opposition proceedings under Article

8(4) CTMR is subject to a number of restrictive conditions:, these rights must confer an entitlement to the

proprietor to exercise them, they must be of more than local significance, they must be protected by the

national law governing them against the use of a (deleted) subsequent trade mark and the rights must

have been acquired prior to the CTMA under the law of the Member State governing that sign.

Suggestion for text

Deleting the (,) comma after the term conditions:

Maintaining the terms “the use of” which have been deleted

Nevertheless, the broad scope of earlier rights to be relied upon in opposition proceedings under Article

8(4) CTMR is subject to a number of restrictive conditions:, these rights must confer an entitlement to the

proprietor to exercise them, they must be of more than local significance, they must be protected by the

national law governing them against the use of a subsequent trade mark and the rights must have been

acquired prior to the CTMA under the law of the Member State governing that sign.

Accept Comment appreciated.


CTMR

Therefore, the Office will reject an opposition in the absence of actual use of the invoked sign. The

following are examples where the opponent failed to meet this basic requirement: Earlier sign Case No

Octopussy

(film title) R 526/2008-4

Suggestion for text Specify the national right in the table ( German prior right)

Accept The earlier right will be specified.


CTMR

Earlier sign BUD (appellation of origin)

Case No T-225/06 RENV, T-255/06 RENV, T-257/06 RENV, T- -309/06 RENV

Specify the origin of the prior national right

Accept Origin of the earlier right will be specified.

INTA Section 5: Trade marks with


The new wording proposed in the following paragraph (new wording highlighted below for easy

reference) is welcome as it is clearer and more accurate than the previous wording:

“Opponents often indicate in the notice of opposition that the earlier trade mark has a reputation in an

area that extends beyond the territory of protection (e.g. a pan-European reputation is alleged for a

national mark). In such a case the opponent’s claim must be examined for the territory of protection

only.”

Suggestion for text

N/A

Accept Comment is appreciated.



A reference to the judgement of the General Court of 10 May 2007 in case T-47/06 Antartica/OHIM - The

Nasdaq Stock Market, para. 52, could be added as an example.

Suggestion for text

“The fact that the intervener has not produced any figures regarding the market share held by the trade

mark NASDAQ in the Community, for the services in classes 35 and 36 for which it was registered is not in

itself capable of calling that finding [reputation of the trade mark NASDAQ in the EU] into question. First,

the list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark

only serve as examples, as all the relevant evidence in the case must be taken into consideration and,

second, the other detailed and verifiable evidence produced by the intervener is already sufficient in itself

to conclusively prove the reputation of its mark NASDAQ within the meaning of Article 8(5) of Regulation

No 40/94”.

Refuse Comment appreciated. The refernce is already contained in the

GL.



In the comment on the case ‘TURBOMANIA’, there is a reference to EU trade mark application in the

Legal Reform version of the Guidelines (same page 21 of these Guidelines) to substitute the term

Community trade mark application in the WP 2 version being reviewed.

Suggestion for text

Consistency should be preferable and the term Community trade mark application should be replaced by

EUTM application (instead of EU trade mark application) as done in other parts of the new text following

the Legal Reform.

Accept EU trade mark application to be replaced with EUTM application.



Deletion of the reference to case T-331/10 VIAGUARA (‘VIAGRA’)

It would be preferable to keep the reference to this case, since it provides users with an additional

example of how to prove the image projected by the reputed mark and how it may help to build an

argument on unfair advantage.

Suggestion for text

“The General Court found that in regard to the nature of the goods concerned, the BoA rightly considered

that the aphrodisiac and stimulating properties claimed for commercial purposes for the non-alcoholic

beverages covered by Class 32 coincide with the therapeutic indications of the earlier mark’s goods or at

least with the images it projects, which the Board had found to be namely an image of pleasure, vitality,

strength and youth (para. 66).”


revision.



Deletion of the legend “In principle, samples of 1000-2000 interviewees are considered sufficient,

provided they are representative of the type of consumer concerned”.

Although this statement might be considered too conclusive when it refers to something which ultimately

must be assessed on a case by case basis, some additional guidance would be advisable as regards the

number of interviewees deemed sufficient for a survey to have some representative value.

Suggestion for text

If the above cited legend is deleted, references to additional case law from the Office’s BoA’s or the

Opposition Division at page 35 of the Guidelines-, following the citation of case R 1345/2010-1 ‘Fukato

Fukato (fig.)’ – would be helpful. For instance the very recent decision in opposition No B 2 148 008 of 4

January 2016 in which the Division finds credible evidence of repute a survey with a total of 1,016

interviewees.


revision.



In all these pages, the term “paragraph” has been inserted when a hyphen has been included to provide a

clarification. See for instance at page 4, the following text:

“This image associated with a trade mark confers on it an – paragraph often significant – paragraph

economic value…”

This is also included in the clean version of the document.

Suggestion for text

This is a technical issue. The word paragraph should be eliminated.

Accept



“Accordingly, the types of injury referred to in Article 8(5) CTMR may result from a lesser degree of

similarity between the marks in question, provided that it is sufficient for the relevant section of the

public to make a connection between those marks that is to say, to establish a link between them

(judgment of 23/10/2003, C-408/01 ‘Adidas-Salomon and Adidas Benelux’, paras 27, 29, 31, and

judgment of 27/11/2008, C-252/07 ‘Intel Corporation’, paras 57, 58, 66)”

Suggestion for text

Minor amendment in the fourth sentence of this paragraph;

“Accordingly, the types of injury referred to in Article 8(5) CTMR may result from a lesser degree of

similarity between the marks in question, provided that it is sufficient for the relevant section of the

public to make a connection between those marks that is to say, to establish a link between them

(judgments of 23/10/2003, C-408/01 ‘Adidas-Salomon and Adidas Benelux’, paras 27, 29, 31, and of

27/11/2008, C-252/07 ‘Intel Corporation’, paras 57, 58, 66)”

Accept



“The earlier mark VIPS has a reputation for restaurants, in particular fast food chains. However, it was not

proven that it also enjoys any particular prestige. The term VIPS is laudatory in itself and extensively used

in this manner. Therefore, it cannot be ‘diluted’. There is no explanation as to how the sales of software

products under the mark VIPS could possibly benefit from their association with a fast-food chain, even if

a link were made”

Suggestion for text

The sentence in red should be added:

“The earlier mark VIPS has a reputation for restaurants, in particular fast food chains. However, it was not

proven that it also enjoys any particular prestige. The term VIPS is laudatory in itself and extensively used

in this manner. Therefore, it cannot be ‘diluted’. There is no explanation as to how the sales of software

products under the mark VIPS could possibly benefit from their association with a fast-food chain, even if

a link were made. Therefore, the Court rules out the risk that the use of the mark applied for would take

unfair advantage of the distinctive character or the repute of the earlier mark”.

Accept

INTA Section 1: Changes in a registration Under point 1.3.6 Signature, the second paragraph about the correction and effect of irregularities is

deleted. As far as we can see, there is no general paragraph which clarifies how to deal with irregularities

and that the respective recordal request is not processed in case of irregularities.

Suggestion for text

We suggest keeping the original wording.





INTA Section 1: Changes in a registration Under point 1.3.8 the deletion of the sub-clause concerning the likelihood of sending out the information

letter to the licensee/pledge:

PLEASE REFER TO THE ORIGINAL DOCUMENT TO SEE THE IMAGE

Suggestion for text

It is accurate that e.g. the German version does not require a “proof” but merely a “Glaubhaftmachung”

(i.e. a demonstration of allegations to the satisfaction of the court). However, at least under German

procedural law, this still requires that the authority assumes a predominant likelihood (überwiegende

Wahrscheinlichkeit) that the respective allegation is true (in contrast to the full conviction of the truth).

Since the consent requirement can be substituted by sending out an information letter and waiting for

three months if the licensee/pledge objects thereto, the Office should at least require some sort of

evidence that such information letter was actually sent out (e.g. fax sending protocol, etc.).

Refuse On the issue of the evidence, this sentence should be read in

combination with the previous paragraphs (the whole of point

a)). The Office does require 'sufficient proof' that the proprietor

has informed the pledgee/licensee. This is clearly indicated in the

text, and should the evidence submitted be insufficient to prove

this, the Office will ask for more evidence/clarifications.

The text describes the element of proof required. The text that

has been removed only deleted the reference to the 'reasonable

likelihood" that the letter was sent/received, and it is deemed

that this 'reasonable likelihood' did not clarify the process further

or assist the users as it is quite general.

INTA Section 1: Changes in a registration Under point 1.4.1 the first sentence “The Office is competent for examining the declaration of surrender.”

is deleted.

Suggestion for text

We suggest keeping this clarifying sentence.

Refuse This sentence has been removed as it is stating an obvious fact.

The Office is competent for examining many different parts of the

EUTM process, however it is deemed not to be necessary to

repeat this statement in every section as it is not necessary.

INTA Section 1: Changes in a registration Section 1.4.2 about the remedy and effect of irregularities as well as information about the recordal of

the surrender is deleted. As far as we can see, there is neither a general paragraph about how to deal

with irregularities and that the respective recordal request is not processed in case of irregularities nor a

general section about such publications.

Suggestion for text






INTA Section 1: Changes in a registration Deletion of the following sentence under point 2.2.3:


Suggestion for text

There is no legal reason to delete this provision (as it is contained in Rule 25(2) CTMIR) and this section

also has not moved to another place. Therefore, the section should be kept.

Refuse The filing of a request for alteration for multiple filings is still

possible in paper format (not via e-filing tools), however in

practice it is not rarely workable as the conditions seldom apply

in an identical manner to multiple files (for example, that the

marks contain the same element, that needs to be altered in the

same way). Rule 25(5) CTMIR (currently incorporated into Article

48(4) EUTMR) still includes this as an option.

INTA Section 1: Changes in a registration Under point 5.2.3, the fifth paragraph on page 16 about remedy and effect of irregularities is deleted. As

far as we can see, there is no general paragraph about how to deal with irregularities and that the

respective recordal request is not processed in case of irregularities.

Suggestion for text






INTA Section 1: Changes in a registration Issue(s) you wish to comment on

Deletion of the section about non-accepted division requests under point 5.3:


Suggestion for text

There is no legal reason to delete this provision and this section also has not moved to another place.

Therefore, the section should be kept for clarification purposes.





INTA Section 3: CTMs as objects of

property, Chapter 1: Transfer

Deletion of the following sentence under point 1:


The section should be kept for clarification purposes.

Accept the sentence "“According to Article 17 EUTMR, registering a

transfer is not a condition for its validity.” has been reinserted



Deletion of the following section under point 1.2:

PLEASE REFER TO ORIGINAL DOCUMENT TO SEE THE IMAGE.

Suggestion for text


Accept Partially acccepted. We have re-inserted the text:

"In the course of the examination of an application for recordal of

a transfer, the Office will only examine whether sufficient

evidence of the transfer has been submitted."

However concerning the second part of the sentence we have

removed the part that specificed what the Office would not

examine.



3.4.2. Particulars of the new proprietor

“[...] In the case of a legal entity, the recordal applicant will indicate the official designation and must

include the legal form of the entity [...]”

Suggestion for text

The verb was changed from “shall” to “will” – however, it should read either “shall”, “must” or “has to” in

order to express that this is an obligation and not an optional indication.

Accept changed "will" to "must" to indicate obligation



Deletion of the following sentence under point 3.7:

“The Office will not automatically inform the other party to the transfer, unless this is appropriate under

the circumstances.”

Suggestion for text


Refuse The sentence should remain deleted. It is not a helpful sentence

as it just informs that maybe, in some circumstances, the other

party may be informed. Unless there are any exceptional

circumstances, deficiencies are communicated only to the

requestor, which is the scenario already explained in the

Guidelines

INTA Part E: Section 3: Chapter 1: Transfer Typos (missing sign ‘) in last paragraph of section 4.1

“For example, if the original list related to ‘alcoholic beverages and the transfer relates to ‘whisky and

‘gin, the original list must be amended by restricting it to ‘alcoholic beverages, except whisky and gin.”

Suggestion for text

Correction (i.e. addition of the sign ‘ after the Italic words):

“For example, if the original list related to ‘alcoholic beverages’ and the transfer relates to ‘whisky’ and

‘gin’, the original list must be amended by restricting it to ‘alcoholic beverages, except whisky and gin’.”

Accept


property, Chapter 2: Licences

1. Introduction

As we understand these provisions are valid both for EUTM and RCDs applications as well and should be

clearly expressed. OHIM's suggestions says “Community designs” which could be argued to include also

include applications. We would suggest to have it more explicit expressed.

Suggestion for text

Paragraphs 1 to 4 below deal with trade mark licences concerning EUTMs and EUTMAs (Applications). The

provisions in the CDR and CDIR dealing with design licences are almost identical to the equivalent

provisions of the CTMR and CTMIR respectively. Therefore, the following applies mutatis mutandis to

registered Community designs (RCDs) and applications for RCDs. Exceptions and specificities to RCDs are

detailed in paragraph 5 below. Exceptions and specificities to international trade marks are laid down in

paragraph 6 below.

Next Round This previous paragraph "Both registered Community designs

(RCDs) and applications for a registered Community design may

be the subject of licences"

refers to applications and registrations of Designs, and we believe

that any later references in the text only to RCD's would include

applications for RCDs. Especially as the life of a RCD application is

so short.

However we take note to include this in the next round of WP2

2017 to see if a general reference can be made in all of the

sections of the Guidelines that refer to RCDs (as it is common to

many other areas, where we have only previously referred to

RCD's (and not specifically applications)



1.1

A clarification of the text is needed.

A definition of “Applicant” might have be provided earlier in the text. However, in this context, an

applicant seems to be the same as the owner or licensor of the trademark (i.e. not a trademark agent

applying for a client). The proprietor can thus also be the applicant. Therefore, the text shall not refer to

the proprietor OR applicant. Proprietors and applicants can be commonly defined as Licensor.

Consequential changes need to be done throughout the document, f ex. In 1.2.

Suggestion for text

A trade mark licence is a contract by virtue of which the proprietor and/or applicant of a trade mark (the

licensor), whilst retaining his proprietorship, authorises a third person (the licensee) to use the trade

mark in the course of trade (including manufacturing), under the terms and conditions set out in the

contract.

Accept This request has been partially accepted. Concerning the first

part, the text has been amended to remove the reference to

'applicant' as it was confusing. The second suggestion (to insert

the words 'including manufacturing') has been rejected as

manufactuiRng is deemed to fall under the general wording 'in

the course of trade' and does not need to be expressly stated.

The final sentence now reads:

"A trade mark licence is a contract by virtue of which the

proprietor of a trade mark (the licensor), whilst retaining his

proprietorship, authorises a third person (the licensee) to use the

trade mark in the course of trade, under the terms and conditions

set out in the contract"



1.1

See comment above re. licensor.

The licensee gets a right on the trademark. Normally all goodwill etc. are reserved for the benefit of the

licensor. The licensee gets a right to USE the trademark.

Suggestion for text

A license refers to a situation where the rights of the licensee to use the EUTM arise from a contractual

relationship with the licensor.

Accept Accepted amendment as suggested.



1.3 a)

Article 1.3 stipulates the advantages of having a registered license.

Section 1.3.a) bullet point two seems in contradiction with Article 1.3 since it

starts with “in the absence of registration of the licence".

Suggestion for text

We suggest deleting 1.3 a) bullet point two.

Next Round It is agreed that the text, as it is worded, can be considered to be

out of place. If the second bullet point is read after the first one

the meaning is clear, but not if they are read as individual points.

Ideally this whole section would need to be simplified and

reworded to make for more comprehensive reading. We take

note to include this in the next round for revision.



1.3 b) second section

The importance of 1.3 c) is that the surrender/partial surrender will not be registered, it is not that the

licensee has the right to be informed (there is no remedy if he is not informed). We would propose the

changes below.

Suggestion for text ALT. 1

The holder of a licence which is registered has, therefore, the right to be informed in advance by the

proprietor of the trade mark of its intention to surrender the trade mark, in the absence of which the

[partial] surrender will not be recorded.

ALT 2.

The holder of a licence which is registered must , therefore, be informed in advance by the proprietor of

the trade mark of its intention to surrender the trade mark, in the absence of which the [partial]

surrender will not be recorded

Refuse Both alternative texts as proposed are refused as they do not

correctly reflect the practice. In both cases, the suggested text

was to clarify that in the absence of this information/proof the

surrender would NOT be recorded. However, it would be

recorded, but not only after 3 months (not immediately)



2.1 last section

We assume the provision applies if there are two agreements – one for each trademark. In that case,the

licensor and the licensee can be the same in both contracts.

Suggestion for text

A single request for the registration of two licence contracts in respect of two or more registered EUTMs

or EUTM applications may be made only if the registered Licensor and licensee are the same parties to

both contracts.

We assume the provision applies if there are two agreements – one for each trademark. In that case,the

licensor and the licensee can be the same in both contracts.

Suggestion for text

A single request for the registration of two licence contracts in respect of two or more registered EUTMs

or EUTM applications may be made only if the registered Licensor and licensee are the same parties to

both contracts.

Refuse According to the Office Practice, it is not sufficient that both

parties (licensor and licencee) are the same. Additionally, the kind

of licence (exclusive non exclusive, partial or total…) and any

further conditions must be same for all marks.



2.2

A clarification of language is needed.

Suggestion for text ”However, when an application for the registration of a licence of a CTM is filed using

the form pursuant to Rule 83 CTMIR …”

Next Round Next round. There are a number of comments/suggestions to

amend the text of this part of the Guidelines by removing

“request” or “requesting” and replacing it with “application” or

“applying” (or applicant/requestor) It is true, that over the years

the section has been amended to include an inconsistent use of

terminology in the text, which should be corrected and

harmonised. We take note to include this in the next round for

revision, as it will not only apply to the section on Licences, but

most probably also to the sections on Rights in rem, Transfer,

levy of execution, etc, and therefore has a wider scope than this

one section of the Guidelines.



2.3 A clarification of language is needed.

Suggestion for text

“The application for the registration of a licence is considered not to have been made until the fee is paid.

The amount of this fee is EUR 200 for each EUTM for which the registration of a licence is applied for. .

However, where several registrations of licences have been applied for in one single application …”

“…provided that they could have been filed in one single application…”

Next Round Next round. See reply to Comment 41, which also applies to this

suggestion.



2.4.1

Applicants can here in principle only be proprietor. This does not appear to tie in with “proprietor OR

applicant” as used in 1.1 (see comments above). The terminology should be reviewed. When reading 1.1

and 2.4 :

Proprietor and applicant =proprietor ; and applicant = proprietor and or licensee, which means that

proprietor = licensee (2.4.1.c))

Sometimes, the term “recordal applicant” is also used. It is suggested to amend the language and use a

consistent terminology.

Suggestion for text

We suggest reviewing the entire terminology related to proprietor, applicant etc. throughout the section

3 chapter 2.


suggestion.



2.4.3.2 /3/4

Request vs application

Suggestion for text

We suggest changing “request” to “application”.


suggestion.



2.4.3.4

There is no rationale behind the deletion of the phrasing below in the chapter on license for the WP 2

document

“Original documents become part of the file and, therefore, cannot be returned to the person who

submitted them. Simple photocopies are sufficient. The original or photocopy does not need to be

authenticated or legalised.”

Suggestion for text

The text should remain.

“Original documents become part of the file and, therefore, cannot be returned to the person who

submitted them. Simple photocopies are sufficient. The original or photocopy does not need to be

authenticated or legalised.”

Accept



Section 2.5 c): The old guidelines (before WP2 in 2014) contained an explanation on an “exclusive

licence”: “An exclusive licence is a licence which excludes any person other than the licensee from using

the mark, even the proprietor himself”. Such explanation had been removed from the guidelines in 2014.

In the light of user-friendliness, the explanation should remain in this section.

Suggestion for text

See above

Refuse The text was removed in 2014 as the Office does not examine the

“exclusive” nature of the licence.

Whether or not the request is exclusive will depend on the

content of the licence, agreement between the parties, and

ultimately an issue of national law, elements which are not

examined by EUIPO.

Any statement or declaration as to the ‘exclusive’ nature of the

licence sought is under the responsibility of the recordal applicant

and the content of the licence agreement, and it may not be

limited to the scenario described in the text that was removed in

2014.



2.6.2

The below text is suggested to be taken out:

“Where the request for registration of the licence is filed by the EUTM proprietor alone, the Office will

not inform the licensee of the recordal request. The examination of proof of the licence will be done ex

officio. The Office will disregard any statements or allegations of the licensee regarding the existence or

scope of the licence or its registration; the licensee cannot oppose the registration of a licence.”

Suggestion for text

We suggest maintaining the text.

Refuse The first sentence will be maintained. For the remainder the text

is redundant, as in case of a request filed by the proprietor alone,

the licencee is not a party of the proceedings.



2.7

The Office will enter the licence in the Community Trade marks register and publish it in the Community

Trade marks Bulletin. In cases of CTM applications the entry will not be published.

Suggestion for text

In cases of applications for recordals of Licenses of CTM (s), the entry will not be published.

Refuse The proposed amendment does not correctly reflect the practice.

In the first sentence of this section (under 1. Introduction) the

office has specifically mentioned that "Both registered EUTMs

and EUTM applications may be the subject of licensing contracts

(licences). Unless otherwise provided, the practice applicable to

EUTMs is also applicable to EUTM applications."

This sentence therefore applies to applications for EUTM, and not

applications for recordals, as it is specifying one of the scenarios

where the practice is different to EUTM applications and EUTMs.



3.6


Suggestion for text

In cases of applications for recordals of Licenses of CTM (s) the entry will not be published.

Refuse The proposed amendment does not correctly reflect the practice.

In the first sentence of this section (under 1. Introduction) the

office has specifically mentioned that "Both registered EUTMs

and EUTM applications may be the subject of licensing contracts

(licences). Unless otherwise provided, the practice applicable to

EUTMs is also applicable to EUTM applications."

This sentence therefore applies to applications for EUTM, and not

applications for recordals, as it is specifying one of the scenarios

where the practice is different to EUTM applications and EUTMs.



Section 4.1 on the definition of transfer of a licence is somewhat misleading and should be clarified.

Suggestion for text

“The transfer of a licence is different from the transfer of a sub-licence insofar as the former licensee

loses all its rights under the licence, and will be replaced by a new licensee, whereas in the case of the

transfer of a sub-licence, the main licence remains in force.”

Accept Accepted amendments as suggested.



5.2


Suggestion for text

An application for a recordal of a license of an RCD may be in the form of a multiple application

containing several designs.

Accept Accepted the amendment as suggested


property, Chapter 3: Rights in rem

The paragraph included in point 2 “Requirement for a Request for the Registration of a Right in rem” is

related to the “levy of execution”, not to Rights in rem. Therefore it should be deleted.

Suggestion for text

We suggest deleting the new paragraph introduced in point 2 (page 7).

Accept Amended paragraph to refer to "right in rem" instead of "levy of

execution" which was a mistake (bad copy/paste). Thank you



2.1 Application form and requests for more than one right in rem.

The Spanish registry for chattel mortgages includes not only pledges on Spanish trademarks but also

pledges on CTMs where the proprietor is from outside the EU and issues an ex officio communication to

OHIM in respect of pledges on EUTMs. Therefore, it should be clarified whether the Office will also

proceed or not with the recordal of the pledge when it is only informed by the Spanish chattel mortgage

Registry ex officio.

Suggestion for text

This should be clarified by EUIPO.

Refuse Under the general notion of administrative cooperation we can

accept a communication from a third party that is not the

proprietor or the pledgee (as in the example provided by INTA,

the Spanish registry fro chattel mortgages). We will accept these

requests from public administrations such as the one quoted but

see no need to include a specific reference of this in the

Guidelines. If we insert here a mention of the cooperation with

national public institutions we would also have to amend many

other sections where it is implied. Just to clarify that the section

in the Guidelines doesn’t limit who the applicants can be, it says

that the ones listed “may” file the request. The list is not

exhaustive.



2.4 .1 Applicants

In light of our prior comment, The Office should decide theeffects of the communication of the Spanish

Chattle mortgage registry.

Suggestion for text

This should be clarified by EUIPO.

Refuse See the reply to Comment 53, the same argument/reasoning

applies



2.5.2. Examination of the mandatory formalities

The expression “The validity of the right in rem agreement will not be examined”, should not be deleted

but modified. It is known that EUIPO will not examine the validity of the agreement reached between the

parties. However, it should be clearly stated that the EUIPO will not examine whether the right in rem

meets with the legal requirements of the correspondent Member State as to produce the legal effects of

rights in rem in those territories.

Suggestion for text

We suggest deleting the expression and including the following: The EUIPO will not examine whether the

right in rem meets with the legal requirements of the correspondent Member State as to produce the

legal effects of rights in rem in those territories.

Refuse The Office does examine the formal requirement of the request,

therefore the proposed text is not 100% correct as it partly

excludes some of the formal check the Office does carry out. The

proposal is not accepted for this reason. The deleted sentence

has been removed as it states what the Office does 'not' do,

which is not in line with the rest of the Guidelines (we clarify

what we "do" do)



2.6 Registration procedure and publications

Re: deletion of comments to Rule 84(5) CTMIR

We understand that Rule 84(5) does not oblige the Office to notify the applicant for recordal of the entry

of the right in rem in the files when the recordal applicant was the pledgee. However that Rule is

applicable and still in force for the CTM Applicant. Therefore the wording below should be included.

Suggestion for text

“The Office will notify the CTM Applicant or proprietor of the entry of the right in rem in the files kept by

the Office.”

Refuse Following the entry into force of the EUTMR the mention to 'the

files kept by the Office' has been removed and the implementing

and delegated acts will follow this line. Which is why the

reference to "the file" will be substituted by references to "the

register". Furtermore, entries concerning applications will not be

entered anymore in the file but in the register (as of the

Amending Regulation)



3.2.1 Cancellation of the registration of a right in rem

The EUIPO should clarify whether it will or not give effect to an ex officio communication from the

Spanish Chattel Mortgage registry informing it of the cancellation of the right in rem.

Suggestion for text

This should be clarified by the EUIPO.

Refuse See the reply to Comment 53, the same argument/reasoning

applies. We would accept the communication, however we will

not specifically make a mention if this in every section of the

Guidelines.



3.5.2 Examination by the Office

In the paragraph explaining application of Rules 35(6) ad 84(5) CTMIR, no modification has been entered

while it actually has been entered in the same paragraph of Chapter 4 Levy of Execution (page 14). In

order to be consistent and for a more complete protection, this paragraph should be amended in the

same line as proposed by the Office for the Levy of Execution.

Suggestion for text

The text should be amended as follows: “The registration of the cancellation or modification of the right

in rem will be communication to both parties.”

Accept Amended paragraph as suggsted. Thank you.



3.6 Registration and publication.

As long as the second paragraph is consistent with the last sentence included in the first paragraph, we

suggest keeping the second paragraph for a better understanding and a more complete explanation of

the various scenarios, particularly when it comes to CTM applications.

Suggestion for text

The second paragraph should be kept.

Refuse We are adapting the Guideliens to the EUTMR wording where ‘in

the files’ is not used. See also the feedback provided in Comment

56. Also, in this section we have clarified that entry will not be

published in cases of EUTM applications,therefore the essence of

the deleted paragraph remains.



6. Rights in rem for International trade Marks

In the last paragraph, the word “to" has been deleted, and no other element has been introduced. While

going through the rules 92.01 to 92.04 of that Guide, it can be confirmed that the “to” element should be

kept as the four points are related to restriction of rights (including rights in rem).

Suggestion for text

We suggest keeping the “to” element.

Refuse The word "to" has been replaced by the proofreaders with a

hyphen which indicates that all four paragraphs apply.


property, Chapter 4: Levy of

execution

3.5.2 Examination by the Office.

The amendment to the third paragraph is not consistent with the lack of amendment to the same

argument/explanation on Chapter 3 Rights in Rem.

The amendment included in this paragraph should be kept.

Suggestion for text

The amendment included in this paragraph should be kept

Accept Accepted proposal. Thank you. We have amended the paragraph

to reflect the same changes in the 'rights in rem' guidelines for

consistency purposes

INTA Part M: International marks “If the applicant uses EM2 forms …”

Suggestion for text

“If the applicant uses the EM2 form …”

Accept

INTA Part M: International marks “An applicant is entitled to file with the Office as office of origin if it is a national of, or has domicile …”

Suggestion for text

“An applicant is entitled to file with the Office as office of origin if it is a national of, or has a domicile …”

Accept

INTA Part M: International marks “… and thus maintain that date as the date of international registration.”

Suggestion for text “… and thus maintain that date as the date of the international registration.”

Accept

INTA Part M: International marks Fourth paragraph:

“For example, an IR for classes 18 and 25 designating China for class 25 can subsequently extended to

China for class 18”

Suggestion for text

“For example, an IR for classes 18 and 25 designating China for class 25 can be subsequently extended to

China for class 18”

Accept

INTA Part M: International marks Fifth paragraph:

“Replies received by the IR holder or its representative will not be addressed where both are located

outside the EU.”

This sentence is unclear.

Suggestion for text

“Replies received from the IR holder or its representative will not be addressed where both are located

outside the EU.”

Accept

INTA Part M: International marks The fifth paragraph in this section should be deleted as it is a repetition of the second paragraph and does

not continue the reasoning of the previous paragraph. It is confusing.

Suggestion for text

We suggest deleting the following paragraph completely:

“Where no provisional refusal has been issued by the Office before the start of the opposition period (six

months after republication), the ex Officio examination shall be considered concluded. An interim status

of the mark will therefore be issued automatically. “

Accept Deleted the fifth paragraph (as it says the same as the second

one)

INTA Part M: International marks It is stated that the observations of third parties are not mentioned to the applicant in case the Office

considers the observations justified. We believe this is contradictory to Article 40 (2) CTMR. There should

be an explanation as to why the practice differs from the wording of Article 40 (2) CTMR. Knowing that an

observation has been filed and the third party who filed it is a valuable information that the applicant

should get.

Suggestion for text

An additional explanation is needed (see above).

Accept The EXA Formalities Guidelines (to which this section cross-

references) do say that the observations will all be forwarded to

the applicant, which implies that the two references to “without

mentioning the hird party observations” are incorrect. To avoid

contradictions with the other section of the Guidelines we have

deleted the two references.

INTA Part M: International marks The newly entered clarification is very helpful in order to ensure the timely suspension of procedure.

Suggestion for text

No alteration is suggested.

Accept

INTA Part M: International marks The newly entered paragraph is again very helpful for the IR holder in order to ensure a timely suspension

of proceedings.

Suggestion for text

No alteration is suggested.

Accept

INTA Part M: International marks The last paragraph of this section needs to be amended. We would advise the Office to inform the

opponent about the closing of the opposition and the new opposition deadline.

Suggestion for text

The Office will inform the opponent about the closing of the previous opposition and inform him about

the deadline for filing a new opposition.

Refuse There is no obligation nor procedural requirement for the Office

to inform the opponent about the transformation. As this will

result in a new EUTM application he can be made aware of this by

the usual methods (publications of new EUTM’s etc)

INTA Part M: International marks In the second paragraph (4th line from top) it is stated that “The IR need not have an identical list of

goods and services: the list may be broader in scope. It cannot, however be narrower.”

It should be clarified that in case of the request for replacement of a direct earlier CTM by an IR

designating the EU, the list of goods and services of the prior CTM will not be enlarged.

Refuse The clarification requested is not clear as the proposal appears to

be saying the same as what is already there (but the other way

around). The text as it is clarifies that the list of G&S of the IR

cannot be narrower (less ) than the EUTM. While the proposal is

to specify that the list of G&S of the EUTM cannot be extended.

MARQUES Examination of Applications for


No. 1.2.1 Duty to state reasons

MARQUES is aware that the duty to state reasons only imposes a minimum standard. With a view to the

general goal of the Guidelines, MARQUES would however welcome if the guidelines not just referred to

these minimal standards but encouraged the Examiners not to simply resort to often-repeated phrases

but to clearly identify the legal principles applied and to explain why and how they have been applied in

each individual case. The reasons given in each individual case are essential for establishing a sound body

of case law from which users of the RCD system can draw reliable conclusions.

Suggestion for text

Add: “The Examiner is encouraged to identify the legal principles applied and explain why they were

applied in the case at hand. He is encouraged to avoid ‘stock’ phrases in giving reasons, as such phrases

often serve to mask the real reasons for a decision. This impinges upon legal clarity and legal certainty,

which can undermine the whole design law system. ”

Refuse The purpose of this section in the guidelines indeed is to explain

to examiners and users alike what the duty to state reasons as

contained in Article 62 CDR entails. It mirrors the established case-

law in this respect. In fact, in the interest of a sound

administration, the examiners cannot give express reasons in

relation to each argument and each piece of evidence submitted.

As far as the facts and legal considerations decisive for the

examiner’s decision are concerned, these must of course be set

out and examiners are instructed accordingly, so as to enable the

party adversely affected to understand the reasons and to enable

the jurisprudence to review the legality of the decision. This,

however, is not a matter subject to the guidelines. Moreover, in

the KC Design’s view, it is not the task of the examiner to

contribute to a sound body of case-law by way of giving

additional reasons going beyond those required by Article 62

CDR.



1.2.2, Right to be heard

There is a typographical error – it should be “legal evidence which forms” instead of “legal evidence that

form”.

Suggestion for text

Replace “legal evidence that form” with “legal evidence which forms”.

Accept



MARQUES notes that the sections on compliance with time limits and possible consequences of non-

compliance differs from the corresponding section in the Guidelines on invalidity proceedings. In order to

avoid a misunderstanding, MARQUES suggests aligning the relevant sections in both documents as far as

possible.

Replace text from “Applicants must respond to …” to “before its expiry (Article 57(1) CDIR)” with the

following paragraphs (literally copied from the Invalidity guidelines):

“The Invalidity Division may disregard facts or evidence that are not submitted in due time by the parties

concerned (Article 63(2) CDR). Parties are reminded that they must file the facts and evidence on which

they rely in due time and within the time limits set by the Invalidity Division. Parties that fail to observe

the time limits run the risk that the evidence may be disregarded. Parties have no unconditional right to

have facts and evidence submitted out of time to be taken into consideration by the Invalidity Division.

Where the Invalidity Division exercises its discretion under Article 63(2) CDR, it must state reasons why

the late facts and evidence are admissible or not, taking into consideration whether the material that has

been produced late is, on the face of it, likely to be relevant to the outcome of the invalidity proceedings

brought before it and, second, whether the stage of the proceedings at which that late submission takes

place and the circumstances surrounding it do not argue against such matters being taken into account

(judgment of 13/03/2007, C-29/05 P, Arcol, EU:C:2007:162, § 42-44). Where a party files a submission by

fax, it should indicate on the accompanying letter whether a confirmation copy (which, as the case may

be, may contain documents in colours) has been sent. Both the fax and the confirmation copy should

reach the Office within the time limit set. In accordance with Article 63(2) CDR, the Office may take into

account a confirmation copy that was not submitted in due time by the parties concerned. If the time

limit is still running, the party may request an extension of the time limit pursuant to Article 57(1) CDIR.”

Next Round The KC Designs welcomes the suggestion. Indeed, the alignment

of guidelines can make the guideline more examiner and user

friendly. However, the suggested change of the guidelines

concerns a section which was not amended in the current

revision cycle. A change of this section will require a more

thorough analyse. Thus, the KC Design will discuss the suggestion

in the next revision cycle.



Add: “As the choice of the languages by the applicant affects the determination of the language of later

proceedings before the Office, applicants are advised to note that the language regime for designs is not

identical to the language regime for EU marks.”

Accept



It is MARQUES’ view that the fast track procedure should also be possible if an exhibition priority is

claimed. There is no reason to discriminate this kind of priority if all required documents and certificates

for a claim of exhibition priority are attached to the e-filing application.

Suggestion for text

Deletion of bullet point no. 5 “no exhibition priority is claimed”.

Refuse Exhibition priority are rarely claimed and examiners thus not in

the habit of examining them. Furthermore, the documentation

filed in support of exhibition priority claims are often not in

accordance with the legal requirements, in particular because the

exhibition relied on does not constitute an exhibition within the

meaning of Art. 44 CDR. Therefore, the EUIPO decided to exclude

applications claiming an exhibition priority from the “Fast Track”

procedure. In the KC Design’s view, in the EUIPO’s quest to

deliver the best service to users by way of offering a Fast Track

procedure, this exception is justified. Moreover, the KC Designs

refers to Article 8(2) CDIR according to which a priority can be

claimed within one month of the filing date.



For reasons of legal certainty, MARQUES suggests that the current legislation referred to in relation

motion simulation be explicitly named.

Suggestion for text

Insert “set out in Art. 36 (5) CDR and Art. 4 CDIR,” after “the current legislation”.

Accept



In MARQUES’ view the insertion of “that does not relate to a two dimensional design and that” in the last

paragraph of that section is misleading. The requirements of a two dimensional design and deferment are

cumulative and not alternative. If one of them is not met the specimen is not admissible. By using “and”

this remains unclear.

Suggestion for text

Employ “or” instead of “and” in the first sentence of the last paragraph of that section, i.e. “Where the

applicant submits a specimen relating to an application that does not relate to a two dimensional design

or that does not contain a request for deferment, the specimen is not admissible.”

Accept



MARQUES suggests to replace the term “absolute grounds of refusal” by the term “grounds for non-

registrability” as employed in Art. 11 CDIR.

Suggestion for text

Provided that the deficiencies are remedied within the time limit set by the Office, the date of receipt of

the original application will be recorded as the date of filing.

Accept



This section is, in MARQUES’ view, liable to cause misunderstandings. In MARQUES’ understanding, the

basic principle governing the relation between representations and subject-matter of protections is “you

get what you see”. In accordance with this principle there is no specific subject-matter of protection for

sets of articles. The fact of being part of a set does, to MARQUES’ view, not add to or alter the subject-

matter of protection of the single article. This section of the Guidelines may however be read as

suggesting that there is a special protection for articles forming part of a set. MARQUES also holds the

view that the fact whether articles are usually sold or intended to be sold as a set is irrelevant for

determining the subject-matter of protection. In MARQUES’ view, it is important to point out in relation

to “sets of articles” that the subject-matter of protections is the appearance of the assemblage of articles.

Suggestion for text

MARQUES suggests clarifications, at least deletion of the paragraph “A set of articles …”.

Accept The section concerning sets of articles establishes that the design

protection sought results from the combination of the articles

making up the set. Otherwise, if protection for the single articles

was sought, they would not be acceptable in one application in

the first place. For this very reason, at least in one view, the sets

of articles must show it in its entirety.

However, the KC Designs accepts MARQUES´ suggestion for

further clarification in this section.

The section concerning sets of articles establishes that the design



















was sought, they would not be acceptable in one application in MARQUES Examination of Applications for


MARQUES maintains that the example incorporating a hand or showing vegetation and flagpoles do not

provide legal certainty or clarity for users of the system. In MARQUES’ view (but not unanimously), these

designs ought not to have been allowed in their existing form – rather, the hand or the

vegetation/flagpoles should have been shown in dotted lines, or blurred or otherwise shaded or outlined

to show that they are not claimed as part of the design. In any case, MARQUES would welcome the

clarification that the way of use of a product is not protected; sole subject-matter of protection is the

appearance of a product.

Suggestion for text

Insertion after “… will be used” of paragraph 2: “(whereas way the product is used is not subject-matter

of design protection).”

Accept The example showing the building has already been substituted

so as to show no other product which may be interpreted as

being subject-matter of the design. As to the example showing

the hand, it is sufficiently clear in the KC Design’s view that the

hand is not part of the design as it cannot be a product. As to the

mode of use, a clarification will be added that this is not the

subject-matter of design protection.



It is MARQUES’ opinion that a section – on the same level as section 5.3 – and examples should be added

concerning the use of shaded lines to represent transparent or shiny surfaces in the reproduction of

designs.

Suggestion for text

Insert “[Headline] 5.4 Shaded lines to indicate surface characteristics [body text] Transparent or shiny

surfaces in drawings can be represented through using shaded lines. [Examples/illustrations added]”

Refuse The KC Designs welcomes the suggestion to add a section on a

graphical means to represent a design. However, even though

shaded lines may be frequently used, it constitutes just one of the

possible means of representing a design. Adding such a broad

topic (albeit the section on separations already touches on it) will

require a thorough analysis, including the issue whether the

guidelines are the proper place to give general guidance about

possibilities to represent a design. This analysis will also need to

take account of whether it may become a subject of a future

convergence programme or other forms of cooperation between

the EUIPO and the national offices.



The contents of that separations section do not fall under the section headline 5.3 “Use of identifiers to

exclude features from protection”. The effect of the use of separations is not an exclusion or limitation of

protection but rather the inclusion of each and every length/width/height of the design. Therefore,

MARQUES suggests using the same headline level as 5.3, i.e. 5.5 (5.4 Being Shades to indicate surface

characteristics”, see above).

Suggestion for text

Insert after new section 5.4 (see above) “[Headline] 5.5 Separations”.

Insert “but rather each and every length of the design (indeterminate length).”

Accept In the current revision cycle to implement the result of the CP6

into the guidelines, this section will be re-allocated. MARQUES is

of course invited to comment on the future new allocation.



The Guidelines state that the same practice as for ornamentation – which in turn is the same practice as

for “products and their parts” – applies to graphic symbols/logos. In MARQUES’ view, it remains unclear

how that practice can be applied to or be transferred to graphic symbols/logos. MARQUES urges the

Office to explain in detail and give examples.

Refuse In the KC Design’s opinion, there can be an overlap between the

product indications ornamentation, graphic symbols, logos and

surface patterns in Class 32 of the Locarno Classification. Taking

also into account that the product indication shall not affect the

scope of protection, it is justified to transfer the practice

concerning ornamentation to said other product indications. For

the same reasons, as far as multiple applications with the product

indication ornamentation are concerned, the respective practice

as stipulated by the guidelines applies to graphic symbols, logos

and surface patterns alike (see section 7.2.3.3. Ornamentation).



The new wording makes clear that the Office does not refuse to acknowledge a partial licence as such but

just the recordal of the partial licence. Still, MARQUES maintains that there is no legal basis for refusing to

register as a partial licence, as Art. 25 CDIR does clearly not exclude other recordals than those

mentioned. To MARQUES, it is evident that the legislator did not specifically mention partial licences as

such licences go without saying; they are a matter of course. MARQUES urges the office to change its

practice in this regard.

Suggestion for text

Deletion of paragraphs 2 and 3.

Next Round As follows from Article 69(4) CDIR, the inclusion of items other

than explicitly referred to in Article 69(2) and (3) CDIR, in

principle, shall be determined by the Office’s Executive Director.

Article 69(3)(l) CDIR makes reference, as regards the type of

licence, to Article 25 CDIR. This provision does not list the

recordal of partial licences. In the KC Design’s view, it cannot be

considered to be evident that partial licences shall be recorded. In

addition to the arguments set out in response to the equivalent

feedback given to WP2-2015, the KC Designs notes that the

corresponding provision of Rule 34 EUTMIR for EU trade marks

explicitly refers to licences for part of the goods/services only.

Therefore, the KC Designs does not share the opinion that the

recordal of partial licences for RCDs was evident for the legislator.

Furthermore, as far as the legal effects vis-à-vis third parties are

concerned, in particular as governed by Article 33(2) CDR, there

should be in the KC Design’s opinion no relevant difference of the

recordal of a licence without noting the products in question as

licences under the law of contract and the recordal of a partial

licence. In both cases, the publicity effect of the Register is the

same.

MARQUES Section 2: Substantive provisions Defences against an Invalidity application based on relative grounds

4.5.3 Acquiescence

The following paragraph is confusing:

“The period of limitation in consequence of acquiescence starts running from the time when the

proprietor of the earlier trade mark becomes aware of the use of the later CTM. That date must

necessarily be later than that of registration of the CTM, that is to say, when the rights in a CTM are

obtained and it is used as a registered trade mark on the market with third parties therefore being aware

of its use. It is at this point that it has the option of not acquiescing in its use and, therefore, opposing it

or seeking a declaration of invalidity of the later trade mark (judgment of 28/06/2012, T-133/09 and

134/09, ‘B. Antonio Basile 1952’, para. 33, judgment of 23/10/2013, T-417/2012, ‘Aqua Flow’, para. 21).”

Suggestion for text

If the following explanatory sentence was removed or maybe added in brackets, it would be less

confusing: “that is to say, when the rights in a CTM are obtained and it is used as a registered trade mark

on the market with third parties therefore being aware of its use”.

Refuse Direct citation from the Court Judgment.

MARQUES Section 3: CTMs as objects of


3.4.4 - Signatures

The removal of “In the case of co ownership, all co owners must sign or appoint a common

representative”.

Suggestion for text

If the sentence is deleted then there should be some clarification on this type of situation to replace this

text as there is no other clarification regarding co owners signatures.

Accept Partially accepted. We have left the original wording however we

have amended it slightly to clarify that the situation as described

would apply when the whole EUTM is being transferred

MARQUES Section 1: Proceedings 5.1.3

Action to be taken

The first paragraph should be precised.

“In the event of a full withdrawal” was moved to the beginning of the sentence. Thus, the rest of the

sentence should explain the situation that refers to full withdrawal. However, the paragraph also

mentions partial withdrawal, so it is confusing which situation it actualy determines.

Accept The KC accepted Marques' comment. The change made is clearly

wrong and the text will be amended.

ITMA Examination of Applications for


3.2 Information identifying the Applicant

The OHIM is replacing the existing wording with more imprecise terminology; "It must enable the Office

to identify the applicant".

3.3 Representation of the design for reproduction

3.3.1 General requirements

"On the basis of current legislation, 3D computer-animated design generating motion simulation can only

be considered as an additional technical means of viewing the design, but does not replace conventional

static views.".

Has the OHIM considered extending the representation requirements to an electronic representation as

will be accepted by the OHIM for trade marks under the new CTM Regulation no. 2015/2424? Digital

sound files will now be acceptable for sound marks and video files can replace a sequence of stills for

moving images.

Suggestion for text

3.2

Natural persons must provide their surname, forename and address and legal entities must provide their

corporate name and address. Such data must enable the Office to identify the applicant. If the applicant

has been given an ID number previously, it will be sufficient to mention that ID number, together with the

name of the applicant.

Accept As to the question concerning 3D computer-animated design, the

KC notes that it is out of the scope of the guidelines revision

cycle. The KC Designs notes that the representation requirements

for designs are based on the Community Design Regulation and

thus not affected by the EUTMR.

ASIPI Examination of Applications for


Guidelines for Examination of Applications for Registered Community

Designs

The draft of this paragraph seems to be confusing, as it suggests that all fees must be paid at the time of

filing the application (including the publication fee in the case of deferment).

The draft of paragraph 2.7.2.4 should be consistent with paragraph

8.1.

Suggestion for text: Perhaps the beginning of the text should be “All necessary fees…”

Accept



The first paragraph of page 47 states that:

“If the language of the previous application is not one of the five Office languages, the examiner may

invite the applicant to file a

translation within two months (Article 42 CDR). It is not necessary

for the whole document to be translated, but only that information

allowing the examiner to check the nature of the right (design or utility model), the country of filing, the

file number, the filing date and the applicant’s name.”

However, we have noticed that the current practice of the Examiners is to request the translation of the

whole document when

the previous application is a Chinese, Japanese or Korean one.

The draft of this part of the Guidelines should be consistent with

the current practice.

Refuse It is not the current practice to request in all cases the translation

of the whole documents when the previous application is a

Chinese, Japanese or Korean one. Rather, it is decided case-by-

case to what extent translations are required in order to allow an

assessment of the required information.



The new name of the Office (EUIPO) should be included also in the title.

Suggestion for text:

GUIDELINES FOR EXAMINATION IN THE EUROPEAN UNION INTELLECTUAL PROPERTY OFFICE (EUIPO) ON

REGISTERED COMMUNITY DESIGNS.

EXAMINATION OF APPLICATIONS FOR REGISTERED COMMUNITY DESIGNS.

Accept

ua no section in guidelines ua/no outcome kc · refuse in this respect, euipo follows the wipo...

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