Content of the application
1. The application for an EU trade mark shall contain:
(a)
a request for registration of the trade mark as an EU trade mark;
(b)
the name and address of the applicant and the State in which that applicant is domiciled or has a seat or an establishment. Names of natural persons shall be indicated by the person's family name(s) and given name(s). Names of legal entities, as well as bodies falling under Article 3 of Regulation (EU) 2017/1001, shall be indicated by their official designation and include the legal form of the entity, which may be abbreviated in a customary manner. The company's national identification number may also be specified if available. The Office may require the applicant to provide telephone numbers or other contact details for communication by electronic means as defined by the Executive Director. Only one address shall, in principle, be indicated for each applicant. Where several addresses are indicated, only the address mentioned first shall be taken into account, except where the applicant designates one of the addresses as an address for service. Where an identification number has already been given by the Office, it shall be sufficient for the applicant to indicate that number and the name of the applicant;
(c)
a list of the goods or services for which the trade mark is to be registered, in accordance with Article 33(2) of Regulation (EU) 2017/1001. That list may be selected, in whole or in part, from a database of acceptable terms made available by the Office;
(d)
a representation of the trade mark in accordance with Article 3 of this Regulation;
(e)
where the applicant has appointed a representative, the name and business address of that representative or the identification number in accordance with point (b); where the representative has more than one business address or where there are two or more representatives with different business addresses, only the first-mentioned address shall be taken into account as an address for service unless the application indicates which address is to be used as an address for service;
(f)
where the priority of a previous application is claimed pursuant to Article 35 of Regulation (EU) 2017/1001, a declaration to that effect, stating the date on which and the country in or for which the previous application was filed;
(g)
where exhibition priority is claimed pursuant to Article 38 of Regulation (EU) 2017/1001, a declaration to that effect, stating the name of the exhibition and the date of the first display of the goods or services;
(h)
where the seniority of one or more earlier trade marks, registered in a Member State, including a trade mark registered in the Benelux countries or registered under international arrangements having effect in a Member State, as referred to in Article 39(1) of Regulation (EU) 2017/1001, is claimed together with the application, a declaration to that effect, stating the Member State or Member States in or for which the earlier trade mark is registered, the date from which the relevant registration was effective, the number of the relevant registration, and the goods or services for which the trade mark is registered. Such declaration may also be made within the period referred to in Article 39(2) of Regulation (EU) 2017/1001;
(i)
where applicable, a statement that the application is for registration of an EU collective mark pursuant to Article 74 of Regulation (EU) 2017/1001 or for registration of an EU certification mark pursuant to Article 83 of Regulation (EU) 2017/1001;
(j)
specification of the language in which the application has been filed, and of the second language pursuant to Article 146(3) of Regulation (EU) 2017/1001;
(k)
the signature of the applicant or the applicant's representative in accordance with Article 63(1) of Commission Delegated Regulation (EU) 2018/625 ( 9 ) ;
(l)
where applicable, the request of a search report referred to in Article 43(1) or (2) of Regulation (EU) 2017/1001.
2. The application may include a claim that the sign has acquired distinctive character through use within the meaning of Article 7(3) of Regulation (EU) 2017/1001, as well as an indication of whether this claim is meant as a principal or subsidiary one. Such claim may also be made within the period referred to in Article 42(2), second sentence, of Regulation (EU) 2017/1001.
3. The application for an EU collective mark or an EU certification mark may include the regulations governing its use. Where such regulations are not included with the application, they shall be submitted within the period referred to in Article 75(1) and Article 84(1) of Regulation (EU) 2017/1001.
4. If there is more than one applicant, the application may contain the appointment of one applicant or representative as common representative.
Representation of the trade mark
1. The trade mark shall be represented in any appropriate form using generally available technology, as long as it can be reproduced on the Register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner so as to enable the competent authorities and the public to determine with clarity and precision the subject matter of the protection afforded to its proprietor.
2. The representation of the trade mark shall define the subject matter of the registration. Where the representation is accompanied by a description pursuant to paragraph 3(d), (e), (f)(ii), (h) or paragraph 4, such description shall accord with the representation and shall not extend its scope.
3. Where the application concerns any of the trade mark types listed in points (a) to (j), it shall contain an indication to that effect. Without prejudice to paragraphs 1 or 2, the type of the trade mark and its representation shall accord with each other as follows:
(a)
in the case of a trade mark consisting exclusively of words or letters, numerals, other standard typographic characters or a combination thereof (word mark), the mark shall be represented by submitting a reproduction of the sign in standard script and layout, without any graphic feature or colour;
(b)
in the case of a trade mark where non-standard characters, stylisation or layout, or a graphic feature or a colour are used (figurative mark), including marks that consist exclusively of figurative elements or of a combination of verbal and figurative elements, the mark shall be represented by submitting a reproduction of the sign showing all its elements and, where applicable, its colours;
(c)
in the case of a trade mark consisting of, or extending to, a three-dimensional shape, including containers, packaging, the product itself or their appearance (shape mark), the mark shall be represented by submitting either a graphic reproduction of the shape, including computer-generated imaging, or a photographic reproduction. The graphic or photographic reproduction may contain different views. Where the representation is not provided electronically, it may contain up to six different views;
(d)
in the case of a trade mark consisting of the specific way in which the mark is placed or affixed on the goods (position mark), the mark shall be represented by submitting a reproduction which appropriately identifies the position of the mark and its size or proportion with respect to the relevant goods. The elements which do not form part of the subject matter of the registration shall be visually disclaimed preferably by broken or dotted lines. The representation may be accompanied by a description detailing how the sign is affixed on the goods;
(e)
in the case of a trade mark consisting exclusively of a set of elements which are repeated regularly (pattern mark), the mark shall be represented by submitting a reproduction showing the pattern of repetition. The representation may be accompanied by a description detailing how its elements are repeated regularly;
(f)
in the case of a colour mark,
(i)
where the trade mark consists exclusively of a single colour without contours, the mark shall be represented by submitting a reproduction of the colour and an indication of that colour by reference to a generally recognised colour code;
(ii)
where the trade mark consists exclusively of a combination of colours without contours, the mark shall be represented by submitting a reproduction that shows the systematic arrangement of the colour combination in a uniform and predetermined manner and an indication of those colours by reference to a generally recognised colour code. A description detailing the systematic arrangement of the colours may also be added;
(g)
in the case of a trade mark consisting exclusively of a sound or combination of sounds (sound mark), the mark shall be represented by submitting an audio file reproducing the sound or by an accurate representation of the sound in musical notation;
(h)
in the case of a trade mark consisting of, or extending to, a movement or a change in the position of the elements of the mark (motion mark), the mark shall be represented by submitting a video file or by a series of sequential still images showing the movement or change of position. Where still images are used, they may be numbered or accompanied by a description explaining the sequence;
(i)
in the case of a trade mark consisting of, or extending to, the combination of image and sound (multimedia mark), the mark shall be represented by submitting an audiovisual file containing the combination of the image and the sound;
(j)
in the case of a trade mark consisting of elements with holographic characteristics (hologram mark), the mark shall be represented by submitting a video file or a graphic or photographic reproduction containing the views which are necessary to sufficiently identify the holographic effect in its entirety.
4. Where the trade mark is not covered by any of the types listed in paragraph 3, its representation shall comply with the standards set out in paragraph 1 and may be accompanied by a description.
5. Where the representation is provided electronically, the Executive Director of the Office shall determine the formats and size of the electronic file as well as any other relevant technical specifications.
6. Where the representation is not provided electronically, the trade mark shall be reproduced on a single sheet of paper separate from the sheet on which the text of the application appears. The single sheet on which the mark is reproduced shall contain all the relevant views or images and shall not exceed DIN A4 size (29,7 cm high, 21 cm wide). A margin of at least 2,5 cm shall be left all around.
7. Where the correct orientation of the mark is not obvious, it shall be indicated by adding the word ‘top’ to each reproduction.
8. The reproduction of the mark shall be of such quality as to enable it to be:
(a)
reduced to a size of not less than 8 cm wide by 8 cm high; or
(b)
enlarged to a size of not more than 8 cm wide by 8 cm high.
9. The filing of a sample or a specimen shall not constitute a proper representation of a trade mark.
Claiming priority
1. Where the priority of one or more previous applications is claimed together with the application pursuant to Article 35 of Regulation (EU) 2017/1001, the applicant shall indicate the file number of the previous application and file a copy of it within three months of the filing date. That copy shall state the date of filing of the previous application.
2. Where the language of the previous application for which priority is claimed is not one of the languages of the Office, the applicant shall, if required by the Office, provide the Office with a translation of the previous application into the language of the Office used as the first or second language of the application, within a period specified by the Office.
3. Paragraphs 1 and 2 shall apply mutatis mutandis where the priority claim relates to one or more previous registrations.
Exhibition priority
Where an exhibition priority is claimed together with the application pursuant to Article 38(1) of Regulation (EU) 2017/1001, the applicant shall, within three months of the filing date, file a certificate issued at the exhibition by the authority responsible for the protection of industrial property at the exhibition. That certificate shall attest that the mark was used for the goods or services covered by the application. It shall also state the opening date of the exhibition and the date of first public use, if different from the opening date of the exhibition. The certificate shall be accompanied by an identification of the actual use of the mark, duly certified by the authority.
Claiming seniority of a national trade mark before registration of the EU trade mark
Where the seniority of an earlier registered trade mark, as referred to in Article 39(1) of Regulation (EU) 2017/1001, is claimed pursuant to Article 39(2) of Regulation (EU) 2017/1001, the applicant shall submit a copy of the relevant registration within three months of the receipt of the seniority claim by the Office.
Content of the publication of an application
The publication of the application shall contain:
(a)
the applicant's name and address;
(b)
where applicable, the name and business address of the representative appointed by the applicant other than a representative falling within the first sentence of Article 119(3) of Regulation (EU) 2017/1001. Where there is more than one representative with the same business address, only the name and business address of the first-named representative shall be published and it shall be followed by the words ‘and others’. Where there are two or more representatives with different business addresses, only the address for service determined pursuant to Article 2(1)(e) of this Regulation shall be published. Where an association of representatives is appointed in accordance with Article 74(8) of Delegated Regulation (EU) 2018/625, only the name and business address of the association shall be published;
(c)
the representation of the mark, together with the elements and descriptions referred to in Article 3 where applicable. Where the representation has been provided in the form of an electronic file, it shall be made accessible by means of a link to that file;
(d)
the list of goods or services, grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of that classification to which that group of goods or services belongs, and presented in the order of the classes of that classification;
(e)
the date of filing and the file number;
(f)
where applicable, particulars of the claim of priority filed by the applicant pursuant to Article 35 of Regulation (EU) 2017/1001;
(g)
where applicable, particulars of the claim of exhibition priority filed by the applicant pursuant to Article 38 of Regulation (EU) 2017/1001;
(h)
where applicable, particulars of the claim of seniority filed by the applicant pursuant to Article 39 of Regulation (EU) 2017/1001;
(i)
where applicable, a statement pursuant to Article 7(3) of Regulation (EU) 2017/1001 that the mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it;
(j)
where applicable, a statement that the application is for an EU collective mark or an EU certification mark;
(k)
an indication of the language in which the application was filed and of the second language which the applicant has indicated pursuant to Article 146(3) of Regulation (EU) 2017/1001;
(l)
where applicable, a statement that the application results from a transformation of an international registration designating the Union pursuant to Article 204(2) of Regulation (EU) 2017/1001, together with the date of the international registration pursuant to Article 3(4) of the Madrid Protocol or the date on which the territorial extension to the Union made subsequently to the international registration pursuant to Article 3 ter (2) of the Madrid Protocol was recorded in the international register and, where applicable, the priority date of the international registration.
Division of the application
1. A declaration of the division of the application pursuant to Article 50 of Regulation (EU) 2017/1001 shall contain:
(a)
the file number of the application;
(b)
the name and address of the applicant in accordance with Article 2(1)(b) of this Regulation;
(c)
the list of goods or services subject to the divisional application, or, where the division into more than one divisional application is sought, the list of goods or services for each divisional application;
(d)
the list of goods or services which are to remain in the original application.
2. The Office shall establish a separate file for each divisional application, which shall consist of a complete copy of the file of the original application, including the declaration of division and the correspondence relating thereto. The Office shall assign a new application number to each divisional application.
3. The publication of each divisional application shall contain the indications and elements laid down in Article 7.
Source: EUR-Lex (Publications Office of the EU), © European Union, reuse permitted under Commission Decision 2011/833/EU.
