Commission Regulation (EC) No 2082/2004 of 6 December 2004 amending Regulation (EC) No 216/96 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs)

of 6 December 2004

amending Regulation (EC) No 216/96 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs)

Preamble

THE COMMISSION OF THE EUROPEAN COMMUNITIES,

Having regard to the Treaty establishing the European Community,

Having regard to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark ¹ , and in particular Article 157(3) thereof,

Whereas:

(1) Regulation (EC) No 422/2004 amended Regulation (EC) No 40/94 with regard, inter alia , to the organisation and procedures of the Boards of Appeal provided for in Articles 130 and 131.

(2) Regulation (EC) No 422/2004 introduced, inter alia , the new post of President of the Boards of Appeal, created an enlarged Board of Appeal and laid down that, under certain conditions, decisions of the Boards of Appeal may be taken by a single member. It is therefore necessary to set out in detail the powers of the President of the Boards of Appeal, the composition and powers of the Boards of Appeal, the allocation of cases to the Boards of Appeal and the composition of the enlarged Board, cases to be referred to the enlarged Board and cases to be decided by a single member.

(3) The practical operation of the Boards of Appeal has shown the need to make certain changes to their organisation and procedures, including changes to the role of the Registry and certain procedural aspects. Centralisation of the Registry and revision of its powers, and rules on exchanges of submissions between parties, are designed to ensure greater efficiency in the handling of cases by the Boards of Appeal. In order not to interfere with proceedings already pending when this Regulation enters into force, a transitional period must be provided for with respect to the exchange of submissions by the parties.

(4) The measures provided for in this Regulation are in accordance with the opinion of the Committee on fees, Implementation Rules and the Procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (trade mark and designs),

HAS ADOPTED THIS REGULATION:

Article 1

Regulation (EC) No 216/96 is amended as follows:

3. Article 4(3) is deleted and Article 4(4) is renumbered as Article 4(3).

4. Article 5 is replaced by the following: ‘Article 5 Registry 1. A Registry shall be set up at the Boards of Appeal, and shall, inter alia, be responsible, under the authority of the President of the Boards of Appeal, for the receipt, dispatch, safekeeping and notification of all documents relating to the proceedings before the Boards of Appeal, and for compilation of the relevant files. 2. The Registry shall be headed by a Registrar. The President of the Boards of Appeal shall appoint a Registry agent who shall perform the tasks of the Registrar when the latter is absent or unable to act or if the post of Registrar is vacant. 3. The Registrar shall, in particular, ensure that the deadlines and other formal conditions relating to the presentation of the appeal and of the statement of grounds are respected. If an irregularity is detected which is liable to make the appeal inadmissible, the Registrar shall, without delay, send a reasoned opinion to the chairman of the Board concerned. 4. The minutes of oral proceedings and of the taking of evidence shall be drawn up by the Registrar or, if the President of the Boards of Appeal agrees, by such agent of the Boards of Appeal as the chairman of the Board concerned may designate. 5. The President of the Boards of Appeal may delegate to the Registrar the task of allocating cases to the Boards of Appeal in accordance with allocation criteria laid down by the Presidium. The Presidium may, upon a proposal by the President of the Boards of Appeal, delegate to the Registry other tasks relating to the conduct of proceedings before the Boards of Appeal.’

5. Article 8 is replaced by the following: ‘Article 8 Procedure 1. If the Registrar sends the chairman of a Board of Appeal an opinion on the admissibility of an appeal in accordance with Article 5(3), second paragraph, the chairman of the Board in question may either suspend the proceedings and request the Board to rule on the admissibility of the appeal, or reserve judgement on the admissibility of the appeal for the decision to end the proceedings before the Board of Appeal. 2. In inter partes proceedings, and without prejudice to Article 61(2) of the Regulation, the statement setting out the grounds of appeal and the response to it may be supplemented by a reply from the appellant, lodged within two months of the notification of the response, and a rejoinder by the defendant, lodged within two months of notification of the reply. 3. In inter partes proceedings, the defendant may, in his or her response, seek a decision annulling or altering the contested decision on a point not raised in the appeal. Such submissions shall cease to have effect should the appellant discontinue the proceedings.’

Article 2

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

The provisions of Article 8(2) and (3) of Regulation (EC) No 216/96, as amended by Article 1(5) of this Regulation, shall apply only to proceedings in respect of which the appeal was lodged after the entry into force of this Regulation.

Final provisions

This Regulation shall be binding in its entirety and directly applicable in all Member States. Done at Brussels, 6 December 2004. For the Commission Charlie McCREEVY Member of the Commission

¹ OJ L 11, 14.1.1994, p. 1 . Regulation as last amended by Regulation (EC) No 422/2004 ( OJ L 70, 9.3.2004, p. 1 ).

. Regulation as last amended by Regulation (EC) No 422/2004 (). ↩ ↩²