Notes on the Conversion Form

Transcription

1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (OHIM) Trade Marks and Designs Notes on the Conversion Form General Remarks The conversion form is made available by the Office for Harmonization in the Internal Market pursuant to Rule 83 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (as amended) ( CTMIR ). It covers conversion relating to all the goods and services contained in the Community trade mark application or registration (total conversion) or part of the goods and services (partial conversion) and priority or seniority (if any) claimed. The forms may be downloaded and printed from the Office s website ( Applicants or their representatives may use forms of a similar structure or format, such as forms generated by computers on the basis of the information contained in the conversion form. Where such electronically generated forms are used, the use of attachments may be avoided by simply extending the electronic version where the conversion form does not provide sufficient space. The Office will supply the national offices with a print-out of information relating to the CTM application or registration from its data base. Therefore the form need only contain the basic information as indicated below. Completed conversion forms should be sent directly to the Office in Alicante. Forms may not be submitted by . The form as well as any other communication relating to proceedings before the Office sent by mail should be addressed as follows: Office for Harmonization in the Internal Market Receiving Unit Avenida de Europa, Alicante, Spain Communications sent by fax should be sent to the following OHIM fax number only: (34) Where communications are sent by fax, confirmation copies are not necessary and are not recommended. The Office will issue receipts for the applications received and will request further information should the communication sent by fax prove to be insufficient. For any information, the OHIM may be contacted on the following telephone number: (34) Avenida de Europa, 4, E Alicante, Spain Tel. (+34) Fax: (+34) Internet:

2 Number of pages The total number of pages sent should be indicated. Applicant/representative reference The applicant or his representative may indicate his own reference, which should occupy no more than 20 characters at the top of page 1. The Office will use this reference in all communications it sends. Box 1: CTM application/registration number The CTM should be identified by its unique number. Box 2: Language In compliance with Rule 95 CTMIR, the applicant must select the language of the conversion proceedings. Where the request for conversion relates to a Community trade mark application, the applicant may choose either the first language or the second language indicated in the application. Where the request for conversion relates to a Community trade mark registration, the applicant may choose any of the five languages of the Office (ES, DE, EN, FR, IT). The present form may be used in any of the official languages of the EC, provided that the form is completed in the language of conversion proceedings as far as textual elements are concerned. Box 3: Word part of the mark If the mark has a word element, that element should be inserted in this box. Where the mark is not a word mark, a copy of the mark will be provided by the Office to national offices. Box 4: Applicant The applicant s name must be indicated. Names of legal entities, as well as bodies falling under Article 3 of Council Regulation (EC) No 207/2009 of 26/02/2009 on the Community trade mark (as amended) ( CTMR ), shall be indicated by their official designation and include the legal form of the entity, which may be abbreviated in a customary manner. Any other information, such as telephone number, etc., will be taken from the Office s database. The indication of such additional data in the conversion form is therefore not required. If the Office has previously allocated an ID number to the applicant, and there has been no change as regards name and address, that ID number should be indicated. The legal form field is mandatory for legal entities. In case of a change of address, a request for recording the change for the existing ID number(s) must be addressed to the Office separately. Box 5: Professional Representative Representation by a professional representative is mandatory for all applicants who have neither their domicile or principal place of business nor a real and effective industrial or commercial establishment in the European Community. Any other applicant is free to appoint a representative. Representation before the Office may be exercised only by professional representatives falling into one of the two following categories (Art. 93(1)(a)(b) CTMR): - legal practitioners qualified in a Member State who are entitled to act in that Member State as representatives in trade mark matters and who have their place of business in the European Community; or - professional representatives entered on the list maintained by the Office. 2

3 Applicants may also act through their employees (Art. 92 (3) CTMR). Where such an employee is appointed by the applicant, the name of the employee must be indicated. An authorization appointing the employee to act must be filed with the conversion request (Rule 76(2) CTMIR). Employees of legal entities with their domicile or principal place of business or an establishment within the European Community may represent other legal entities provided economic connections exist between the two legal entities, such as common ownership or control. This also applies when the applicant is a legal entity from outside the European Community. In these cases, information relating to the legal entity whose employee is acting on behalf of the applicant must be provided by way of attachment to the present form. The attachment should give details on how the two legal entities are connected : (e.g. shareholding, board of directors, etc.). The authorization in these cases must be given by the applicant and not the employer. An authorization should be filed by the connected employee and should accompany the conversion request (Rule 76( 2) CTMIR. If the professional representative or the employee has previously been allocated an ID number by the Office, it is sufficient to indicate that ID number and the name (name of association, surname and first name(s) of natural person). In the event of a change of address, a request for recording the change for the existing ID number(s) must be addressed to the Office separately. Where the appointment of a professional representative relates to an association of representatives, it is sufficient to indicate the name of that association. Such appointment is not treated as an appointment of multiple representatives. Where an individual professional representative is appointed, the surname and the first name(s) of the individual must be indicated. The box relating to the appropriate type of representative must be ticked where a representative has been appointed. When there is more than one representative, the box legal practitioners or OHIM representative should be ticked and names and ID numbers of all additional representatives should be provided by means of enlarging the name box and the ID number box. Box 6: Ground for conversion (Art. 112 (1)(a)(b)(4)(5)(6) CTMR) The various grounds for requesting conversion are listed. One of these grounds must be indicated by ticking the appropriate box, together with the relevant date. In certain cases, the Office will calculate the time limit for conversion itself. - Application deemed to be withdrawn within the meaning of Article 112 (1) CTMR: 1) When class fees are not paid within the relevant time limit after filing of the application (Article 36(5) CTMR); 2) When the registration fee is not paid in due time (Article 45 CTMR). An indication of the date of the communication from the Office should be given. The date of notification of this communication to the applicant will be the starting point of the three months for conversion. - Application withdrawn by applicant pursuant to Article 43 CTMR: Article 112 (1)(a) CTMR. An indication of the date of the withdrawal should be given. The day the withdrawal was received by the Office will be the starting point of the three months for conversion. - Application refused by a final decision of the Office: Article 112 (1)(a) CTMR. This will usually mean a refusal on absolute grounds under Article 7 CTMR and relative grounds under Article 8 CTMR. An indication of the date of the decision should be given. The Office will calculate the time limit for conversion (3 months counting from the day the decision became final). Note: Pursuant to Article 113 (3) CTMR, conversion can be refused in certain cases. 3

4 - Registration has ceased to have effect as a result of a decision by the Office (Article 55 CTMR). An indication of the date of the decision should be given. The Office will calculate the time limit for conversion (3 months counting from the day the decision became final). - Registration has been surrendered (Article 50 CTMR). An indication of the date of entry in the Register of the surrender should be given. This date will be the starting point of the time limit for conversion. - Registration has not been renewed (Article 47 CTMR). An indication of the date of expiry of the mark on the Register should be given. The Office will calculate the time limit for conversion (3 months after the 6 month grace period for renewal). - Registration has ceased to have effect as a result of a Community trade mark court decision (Article 55 CTMR). It is not necessary at this stage to provide a translation of the decision (Rule 38 CTMIR). An indication of the date on which the decision became final should be given. Box 7: Member State(s) The request for conversion may be filed for one or more or all Member States. The indication of the Member State is without prejudice to a later finding under Article 113 (3) CTMR that conversion with respect to a particular Member State is not available. Box 8: Priority Seniority (Art. 29 to Art. 35 CTMR) Where total Paris Convention/WTO priority (Article 29 CTMR) or exhibition priority (Article 33 CTMR) had been claimed for the Community trade mark application or registration which is the subject of the conversion request, or where total seniority had been claimed, such priority or seniority claims, to the extent that they are relevant for the conversion proceedings, must be indicated. The relevant information will be extracted from the Office databases. Box 9: Payment of fees The conversion fee is EUR 200 (Art.2(20) Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) ( CTMFR )). Payment of the fee must be made in Euros. Payment can be effected by: - debiting a current account held with the Office, indicating the number of that account; the holder of a current account may state that the current account may not be used for the payment; - making a transfer, in Euros, to the bank account of the Office, indicating the name, address and reference number of the applicant or representative, and the conversion to which the payment refers. Current accounts may be opened by applying in writing to the Office at the following address: Office for Harmonization in the Internal Market Financial Department Avenida de Europa, Alicante, Spain Telephone: (34) Fax: (34)

5 Money transfers may be made to the account of the Office at the following banks: Banco Bilbao Vizcaya Argentaria Account No SWIFT code: BBVAESMM La Caixa Account No SWIFT code: CAIXESBBXXX Box 10 : Signature The conversion form must be signed at the bottom of page 1 together with an indication of the name of the person signing. Type of conversion Unless otherwise indicated, the Office will assume that any partial conversion request applies to all Member States indicated in box 7 for all the goods and services particularized on page 2. List of goods and services An indication of the list of goods and services is not necessary where conversion relates to all the goods or services contained in the Community trade mark application or registration (total conversion). In all other cases, the list of goods and services in respect of which conversion is requested must be indicated in the language of the conversion proceedings. Where conversion is partial and requested for more than one Member State, the list of goods and services may be different for each Member State, provided that the goods and services in respect of which conversion is requested are also found in the Community trade mark application or registration for which conversion is requested (Rule 44 (1)(e) CTMIR). Attachments must be used where the list of goods and services is not identical for all Member States. An indication of the Member State concerned must be included. National representative (annex) The application for conversion may contain, if the applicant so wishes, an indication of the professional and/or other representative entitled to act before the respective national office according to that office s rules. Such indication will facilitate contact between the national office and the conversion applicant. If no such representative is indicated, the respective national rules shall apply as regards contact in cases when a national representative or an address for service is required. 5