Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (Text with EEA relevance)

REGULATION (EU) 2015/2424 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

of 16 December 2015

amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs)

(Text with EEA relevance)

Article 2

Regulation (EC) No 2868/95 is amended as follows:

• (1)Rule 1(3) is deleted;

• (2)Rule 2 is deleted;

• (3)Rule 4 is deleted;

• (4)Rule 5 is deleted;

• (5)Rule 5a is deleted;

• (6)Rule 9(3) is amended as follows:

• (a)in point (a), the words ‘Rules 1, 2 and 3’ are replaced by the words ‘Rules 1 and 3 and Article 28 of the Regulation’;

• (b)in point (b), the reference to ‘Rule 4(b)’ is replaced by a reference to ‘Article 26(2) of the Regulation’;

• (6a)In paragraph 1 of Rule 10, the reference to ‘Rule 4(c)’ is replaced by a reference to ‘Article 38(2) of the Regulation’;

• (7)Rule 11(2) is deleted;

• (8)Rule 12(k) is deleted;

• (8a)Rule 23 is deleted;

• (8b)In paragraph 1 of Rule 24, the reference to ‘Rule 84(2)’ is replaced by a reference to ‘Article 87(2) of the Regulation’;

• (9)Title IV is deleted;

• (9a)In Rule 47, the reference to ‘Rule 84(2)’ is replaced by a reference to ‘Article 87(2) of the Regulation’;

• (10)In paragraph 2 of Rule 62, the words ‘in the Community’ are replaced by ‘in the European Economic Area’;

• (11)In paragraph 1 of Rule 71, the words ‘within the Community’ are replaced by ‘within the European Economic Area’;

• (12)Rule 76(2) is deleted;

• (13)Rule 78 is amended as follows:

• (a)in point (c) of paragraph 2, the words ‘in the Community’ are replaced by ‘in the European Economic Area’;

• (b)in paragraphs (2)(b), (3) and (5), the words ‘Member State’ and ‘Member States’ are replaced by ‘Member State of the European Economic Area’ and ‘Member States of the European Economic Area’ respectively;

• (14)Rule 84 is deleted;

• (15)Rule 87 is deleted;

• (16)In Title XI, Part K is deleted;

• (16a)In paragraph 1 of Rule 93, the phrase ‘, otherwise Rule 89 shall not apply’ is deleted;

• (16b)In paragraph 3 of Rule 93, the words ‘and Rule 88’ are deleted;

• (17)Rule 112(2) is deleted;

• (17a)In paragraph 6 of Rule 115, the reference to paragraph 2 of Rule 112 is deleted;

• (17b)In paragraph 3, second subparagraph, of Rule 121, the reference to paragraph 2 of Rule 112 is deleted.

Article 3

Regulation (EC) No 2869/95 is repealed.

References to the repealed Regulation shall be construed as references to Regulation (EC) No 207/2009 and shall be read in accordance with the correlation table set out in Annex II.

Article 4

This Regulation shall enter into force on 23 March 2016.

The following points of Article 1 of this Regulation shall apply from 1 October 2017:

points (8); (18) with the exception of paragraph 5b of Article 17 of Regulation (EC) No 207/2009; (19); (20); (21); (22); (23); (24); (26) in so far as it relates to paragraph 1, point (d), and paragraph 3 of Article 26 of Regulation (EC) No 207/2009; (29); (30) in so far it relates to paragraphs 1 and 3 of Article 30 of Regulation (EC) No 207/2009; (31) in so far as it relates to paragraphs 1 and 2 of Article 33 of Regulation (EC) No 207/2009; (32) in so far as it relates to paragraphs 1a, 4 and 6 of Article 34 of Regulation (EC) No 207/2009; (33); (34); (35) in so far as it relates to paragraph 3 of Article 37 of Regulation (EC) No 207/2009; (37) in so far as it relates to paragraph 1, second sentence, and paragraphs 3 and 4 of Article 39 of Regulation (EC) No 207/2009; (43) in so far as it relates to paragraphs 2, 3, 4a and 8 of Article 44 of Regulation (EC) No 207/2009; (46) in so far as it relates to paragraph 5, third sentence of Article 48 of Regulation (EC) No 207/2009; (47) in so far as it relates to paragraph 1, first subparagraph, and paragraphs 2 to 5 of Article 48a of Regulation (EC) No 207/2009; (48) in so far as it relates to paragraph 3 of Article 49 of Regulation (EC) No 207/2009; (49) in so far as it relates to paragraphs 2, 3 and 4 of Article 50 of Regulation (EC) No 207/2009; (61); (62); (63); (64) in so far as it relates to paragraph 1 of Article 67 of Regulation (EC) No 207/2009; (67) with the exception of paragraph 3 of Article 74b of Regulation (EC) No 207/2009; (68); (71) in so far as it relates to paragraphs 3 and 5 of Article 78 of Regulation (EC) No 207/2009; (72) in so far as it relates to paragraphs 1 to 4 of Article 79 of Regulation (EC) No 207/2009; (73) with the exception of paragraph 2 of Article 79b of Regulation (EC) No 207/2009, and paragraph 5 of Article 79c of Regulation (EC) No 207/2009; (74) in so far as it relates to paragraphs 1, 2 and 4 of Article 80 of Regulation (EC) No 207/2009; (75) in so far as it relates to paragraph 2 of Article 82 of Regulation (EC) No 207/2009; (76) in so far as it relates to paragraphs 1 and 2 of Article 82a of Regulation (EC) No 207/2009; (77), (78) in so far as it relates to paragraphs 1, 6 and 7 of Article 85 of Regulation (EC) No 207/2009; (80) in so far as it relates to point (m) of paragraph 2 and point (y) of paragraph 3 of Article 87 of Regulation (EC) No 207/2009; (84) in so far as it relates to paragraphs 1, 2 and 3 of Article 89 of Regulation (EC) No 207/2009; (97) with the exception of paragraph 6 of Article 113 of Regulation (EC) No 207/2009; (98); (102) in so far as it relates to paragraphs 5, 5a, 6, 8 and 9 of Article 119 of Regulation (EC) No 207/2009; (103); (108) in so far as it relates to Article 128(4)(o) of Regulation (EC) No 207/2009; (111) in so far as it relates to the third sentence in paragraph 2 of Article 132 of Regulation (EC) No 207/2009; (113); (125); (126) in so far as it relates to paragraphs 1 and 3 to 8 of Article 147 of Regulation (EC) No 207/2009; (127) in so far as it relates to paragraph 1 of Article 148a of Regulation (EC) No 207/2009; (128) in so far as it relates to paragraphs 1, 3 and 4 of Article 149 of Regulation (EC) No 207/2009; (129) in so far as it relates to Article 153 of Regulation (EC) No 207/2009; (130) in so far as it relates to paragraphs 1 to 5 of Article 153a of Regulation (EC) No 207/2009; (132) with the exception of paragraph 3 of Article 154a of Regulation (EC) No 207/2009; (135) in so far as it relates to paragraph 3 of Article 158 of Regulation (EC) No 207/2009; (136); (137) in so far as it relates to paragraphs 4 to 9 of Article 159 of Regulation (EC) No 207/2009; (138) in so far as it relates to paragraphs 3 to 5 of Article 161 of Regulation (EC) No 207/2009; and (139).

Point (108) of Article 1 of this Regulation,  in so far as it relates to Articles 124(1)(h) and 128(4)(n) of Regulation (EC) No 207/2009, shall apply from the date on which the decision provided for in Article 124(2) of Regulation (EC) No 207/2009 enters into force, or  12 months following the date specified in the first paragraph of this Article, whichever is earlier. Until that date, the powers referred to in Article 124(1)(h) of Regulation (EC) No 207/2009 shall be exercised by the Executive Director.

This Regulation shall be binding in its entirety and directly applicable in all Member States.

ANNEX I

The following annex is inserted:

‘ANNEX -I

AMOUNT OF FEES

• A.The fees to be paid to the Office under this Regulation shall be as follows (in EUR):

• 1.Basic fee for the application for an individual EU trade mark (Article 26(2)):

• EUR 1 000

• 2.Basic fee for the application for an individual EU trade mark by electronic means (Article 26(2)):

• EUR 850

• 3.Fee for the second class of goods and services for an individual EU trade mark (Article 26(2)):

• EUR 50

• 4.Fee for each class of goods and services exceeding two for an individual EU trade mark (Article 26(2)):

• EUR 150

• 5.Basic fee for the application for an EU collective mark or an EU certification mark (Article 26(2) and Article 66(3) or Article 74a(3)):

• EUR 1 800

• 6.Basic fee for the application for an EU collective mark or an EU certification mark by electronic means (Article 26(2) and Article 66(3) or Article 74a(3)):

• EUR 1 500

• 7.Fee for the second class of goods and services for an EU collective mark or an EU certification mark: (Article 26(2) and Article 66(3) or Article 74a(3)):

• EUR 50

• 8.Fee for each class of goods and services exceeding two for an EU collective mark or an EU certification mark (Article 26(2) and 66(3) or Article 74a(3)):

• EUR 150

• 9.Search fee for an EU trade mark application (Article 38(2)) or for an international registration designating the Union (Article 38(2) and Article 155(2)): EUR 12 multiplied by the number of central industrial property offices referred to in Article 38(2); that amount, and the subsequent changes, shall be published by the Office in the Official Journal of the Office.

• 10.Opposition fee (Article 41(3)):

• EUR 320

• 11.Basic fee for the renewal of an individual EU trade mark (Article 47(3)):

• EUR 1 000

• 12.Basic fee for the renewal of an individual EU trade mark by electronic means (Article 47(3)):

• EUR 850

• 13.Fee for the renewal of the second class of goods and services for an individual EU trade mark (Article 47(3)):

• EUR 50

• 14.Fee for the renewal of each class of goods and services exceeding two for an individual EU trade mark (Article 47(3)):

• EUR 150

• 15.Basic fee for the renewal of an EU collective mark or an EU certification mark (Article 47(3) and Article 66(3) or Article 74a(3):

• EUR 1 800

• 16.Basic fee for the renewal of an EU collective mark or an EU certification mark by electronic means (Article 47(3) and Article 66(3) or Article 74a(3)):

• EUR 1 500

• 17.Fee for the renewal of the second class of goods and services for an EU collective mark or an EU certification mark (Article 47(3) and Article 66(3) or Article 74a(3)):

• EUR 50

• 18.Fee for the renewal of each class of goods and services exceeding two for an EU collective mark or an EU certification mark (Article 47(3) and Article 66(3) or Article 74a(3)):

• EUR 150

• 19.Additional fee for the late payment of the renewal fee or the late submission of the request for renewal (Article 47(3)): 25 % of the belated renewal fee, subject to a maximum of EUR 1 500

• 20.Fee for the application for revocation or for a declaration of invalidity (Article 56(2)):

• EUR 630

• 21.Appeal fee (Article 60(1)):

• EUR 720

• 22.Fee for the application of restitutio in integrum (Article 81(3)):

• EUR 200

• 23.Fee for the application for the conversion of an EU trade mark application or an EU trade mark (Article 113(1), also in conjunction with Article 159(1)):

• (a)into a national trade mark application;

• (b)into a designation of Member States under the Madrid Protocol:

• EUR 200

• 24.Fee for continuation of proceedings (Article 82(1)):

• EUR 400

• 25.Fee for the declaration of division of a registered EU trade mark (Article 49(4) or an application for an EU trade mark (Article 44(4)):

• EUR 250

• 26.Fee for the application for the registration of a licence or another right in respect of a registered EU trade mark (before 1 October 2017, Rule 33(2) of Regulation (EC) No 2868/95; and from that date, Article 22a(2)) or an application for an EU trade mark (before 1 October 2017, Rule 33(2) of Regulation (EC) No 2868/95; and from that date, Article 22a(2)):

• (a)grant of a licence;

• (b)transfer of a licence;

• (c)creation of a right in rem;

• (d)transfer of a right in rem;

• (e)levy of execution:

• EUR 200 per registration, but where multiple requests are submitted in the same application or at the same time, not to exceed a total of EUR 1 000

• 27.Fee for the cancellation of the registration of a licence or other right (before 1 October 2017, Rule 35(3) of Regulation (EC) No 2868/95; and from that date, Article 24a(3)): EUR 200 per cancellation, but where multiple requests are submitted in the same application or at the same time, not to exceed a total of EUR 1 000

• 28.Fee for the alteration of a registered EU trade mark (Article 48(4)):

• EUR 200

• 29.Fee for the issue of a copy of the application for an EU trade mark (Article 88(7)), a copy of the certificate of registration (Article (45(2)), or an extract from the register (Article 87(7)):

• (a)uncertified copy or extract:

• EUR 10

• (b)certified copy or extract:

• EUR 30

• 30.Fee for the inspection of the files (Article 88(6)):

• EUR 30

• 31.Fee for the issue of copies of file documents (Article 88(7)):

• (a)uncertified copy:

• EUR 10

• (b)certified copy:

• EUR 30

• plus per page, exceeding 10

• EUR 1

• 32.Fee for the communication of information in a file (Article 88(9)):

• EUR 10

• 33.Fee for the review of the determination of the procedural costs to be refunded (before 1 October 2017, Rule 94(4) of Regulation (EC) No 2868/95; and from that date, Article 85(7)):

• EUR 100

• 34.Fee for the filing of an international application at the Office (before 1 October 2017, Article 147(5); and from that date, Article 147(4)):

• EUR 300

• B.Fees to be paid to the International Bureau

I. Individual fee for an international registration designating the Union

• 1.The applicant for an international registration designating the Union shall be required to pay to the International Bureau an individual fee for the designation of the Union in accordance with Article 8(7) of the Madrid Protocol.

• 2.The holder of an international registration who files a request for territorial extension designating the Union made subsequent to the international registration shall be required to pay to the International Bureau an individual fee for the designation of the Union in accordance with Article 8(7) of the Madrid Protocol.

• 3.The amount of the fee under B.I.1 or B.I.2 shall be the equivalent in Swiss Francs, as established by the Director-General of the WIPO pursuant to Rule 35(2) of the Common Regulations under the Madrid Agreement and Protocol, of the following amounts:

• (a)for an individual trade mark: EUR 820 plus, where applicable, EUR 50 for the second class of goods and services and EUR 150 for each class of goods and services contained in the international registration exceeding two;

• (b)for a collective mark or a certification mark: EUR 1 400 plus, where applicable, EUR 50 for the second class of goods and services and EUR 150 for each class of goods or services exceeding two.

II.   Individual fee for a renewal of an international registration designating the Union

• 1.The holder of an international registration designating the Union shall be required to pay to the International Bureau, as a part of the fees for a renewal of the international registration, an individual fee for the designation of the Union in accordance with Article 8(7) of the Madrid Protocol.

• 2.The amount of the fee referred to in B.II.1 shall be the equivalent in Swiss Francs, as established by the Director-General of the WIPO pursuant to Rule 35(2) of the Common Regulations under the Madrid Agreement and Protocol, of the following amounts:

• (a)for an individual trade mark: EUR 820 plus, where applicable, EUR 50 for the second class of goods and services and EUR 150 for each class of goods and services contained in the international registration exceeding two;

• (b)for a collective mark or a certification mark: EUR 1 400 plus, where applicable, EUR 50 for the second class of goods and services and EUR 150 for each class of goods and services contained in the international registration exceeding two.’

ANNEX II

CORRELATION TABLE