The Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs) Part E, Section 3:

Transcription

1 The Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs) Part E, Section 3: Changes in an application or registration (

2 TABLE OF CONTENTS 3.1 WITHDRAWAL Declaration of withdrawal Unconditional and binding character of the declaration Action to be taken Refund of application fees SURRENDER General principles Formal requirements for a declaration of surrender Competence Action taken AMENDMENT (OTHER THAN OF THE LIST OF GOODS AND SERVICES) Amendment of a CTM application Amendment of a registered CTM LIMITATIONS OF THE LIST OF GOODS AND SERVICES Procedural admissibility of a restriction Valid restriction Class headings vs. individual goods Restriction as a means of overcoming an absolute grounds objection? Partial surrender DIVISION Division of an application Division of a CTM Registration 20 2

3 3.1 Withdrawal Declaration of withdrawal A Community trade mark application (CTM application) may be withdrawn, wholly or in part, at any time during its pendency. Once a decision to refuse the CTM application is taken, the case is no longer pending, unless an appeal is actually filed, which has suspensive effect. Any declaration of a withdrawal made after a decision was notified to the party, even within the appeal period, has no legal effect whatsoever unless an appeal was actually filed. Such declarations will be kept on file but will not trigger any change in the legal status of the mark, or in our databases, nor can it have an effect on the grounds for conversion and the application of Article 108 (2) CTMR. The declaration must be made in writing. In the course of an oral hearing it may also be made orally, and will be entered in the minutes of the proceedings. A form is not provided for by the Office. As for representation, the normal rules apply (see Part A.5 of this Manual). The declaration is not subject to a fee. The declaration must be made in the first or the second language indicated by the applicant in his CTM application. The same applies during an opposition proceeding but for the case of a partial withdrawal made in a language other than the language of the opposition procedure, see Part C (the Manual concerning Opposition), Chapter 1, B. VII. 4. The applicant may also limit at any time the list of goods and services contained in his CTM application. Such a limitation constitutes in fact a partial withdrawal. In this case the applicant must indicate the goods and services to be deleted from the list, or which goods and services are to be replaced by which other goods and services. For details, see par Unconditional and binding character of the declaration The declaration of withdrawal becomes effective upon its receipt by the Office, provided that no revocation of the declaration reaches the Office later than, i.e. before or at the latest on the same day as the receipt of the declaration of withdrawal. That means that if a declaration of withdrawal and a letter revoking that declaration reach the Office on the same day (regardless of the hour and minute of their receipt), they cancel each other out. 3

4 Once having become effective, the declaration may not be freely revoked. The declaration of withdrawal is void where it contains conditions or time limitations. One consequence is that it may not be made under the condition that the Office takes a particular decision or, in an opposition proceeding, the other party makes a procedural declaration. This shall rather be viewed as a mere suggestion to resolve the case, and the Office will inform the opponent and may invite him to proceed to an amicable settlement. Another consequence is that the declaration does not become effective if it is made in respect of some goods (partial withdrawal) under the condition that the Office accepts the application for the remaining goods. Such a declaration will be taken as a suggestion for the examiner to arrive at an acceptable list of goods and services. Where the applicant reacts on an official action by filing a limited list of goods and services (partial withdrawal), it shall be verified whether an unequivocal withdrawal of the remaining goods and services is declared or whether the amended list of goods and services has the status of a proposal or counterproposal of the applicant subject to the agreement of the Office. It is allowable to react on an Office action by filing amended lists of goods and services having the status of auxiliary requests. This does not constitute a declaration made under a condition Action to be taken The Examiner will note the declaration of withdrawal, secure publication of the full or partial withdrawal in the Bulletin, if the CTM application was already published, and close the file of the CTM application, unless an opposition is pending. As for the incidence of full or partial withdrawal on an opposition procedure, see Part C (the Manual concerning Opposition), Chapter 1, B. VII Refund of application fees A refund of the basic application fee will only be made if the declaration of withdrawal reaches the Office - where payment has been made by cheque, in cash or by bank transfer, before or at the latest at the same day of the receipt of the cheque (provided that the cheque is met) or the receipt of the amount of the cash payment, or until the date on which the amount is actually entered on the bank account of the Office, or, - where payment is made by using a current account, within the time limit of one month for payment of the basic application fee or, where written instruction has been given immediately to debit the current account, before or at the latest on the same day on which that instruction was received. Where the basic application fee is to be refunded, any additional class fees paid will be refunded as well. 4

5 A refund exclusively of additional class fees will not be made, except where they have been paid in excess of the classes indicated by the applicant in the CTM application and where the payment has not been asked for by the Office. 3.2 Surrender General principles A Community trade mark (CTM) may be surrendered. The surrender shall be declared to the Office. The declaration of surrender has the effect that, following the registration of the surrender in the Register of Community Trade Marks, the rights of the proprietor of the registered CTM, as well as of his licensees and any other holders of rights in the mark, lapse with an ex nunc effect. The effect of a declaration of surrender - as distinct from a declaration of invalidity, which takes effect as from the date of filing of a CTM application - commences only at the date the surrender is registered in the Register of Community Trade Marks, and thus has no retroactive effect. The surrender has procedural and substantive effects. In procedural terms, upon entry of the surrender into the Register, the Community trade mark is removed from the Register and the proceedings before the Office terminate. However, where an admissible request for declaration of invalidity has been filed with the Office prior to the entry of the surrender into the Register, such proceedings will not per se terminate, as it should not be possible for the proprietor of the CTM to avoid the declaration that the CTM has been invalid as from the outset by surrendering it only with an ex nunc effect. Rather, the invalidity procedure will continue for the purposes of obtaining a declaratory statement on the ex tunc effect of the invalidity of the CTM if and when the requesting party can demonstrate a sufficient legal interest in obtaining such a statement in spite of the removal of the CTM from the Register, and the costs will be charged on the losing party and not in application of Article 81 (3) CTMR. The substantive effects of surrender vis-à-vis third parties comprise that the proprietor of the CTM renounces invoking, in the future, any rights out of his mark. However, as far as procedures before the Office are concerned, the proprietor of the CTM who has surrendered it and who later files the same, or a similar, trade mark again with the Office will not be faced with an objection by the examiner that his mark for which he applies is a repetition of a mark that has already been surrendered. In other words, the examiner, on examination of a new CTM application, will not check whether an identical mark has already been subject to a surrender entered into the Register. 5

6 3.2.2 Formal requirements for a declaration of surrender Form and language of the declaration of surrender The surrender shall be declared to the Office in writing. The general rules for communications to the Office apply. The declaration of surrender shall be filed in one of the five languages of the Office. That language will become the language of the proceedings for registration of the surrender. The declaration is not subject to a fee Unconditional and binding character of the declaration The declaration of surrender is void where it contains conditions or time limitations. For example, it may not be made under the condition that the Office takes a particular decision or, in an inter partes proceeding, the other party makes a procedural declaration. However, the Office may invite the other party to proceed to an amicable settlement of a cancellation proceeding. Although the surrender becomes effective vis-à-vis third parties only once it is registered in the Register of Community Trade Marks, the declaration of surrender becomes effective vis-à-vis the Office once it is received by the Office. The declarant is bound by the declaration of surrender during the procedure for registration of the surrender, unless a withdrawal of the declaration reaches the Office before or at the latest at the same day of the receipt of the declaration of surrender Signature Save where Rule 79 otherwise allows, the declaration of surrender must be signed by the proprietor of the CTM or his duly appointed representative, unless it is made by electronic means Representation, authorization As far as representation of the proprietor of the Community trade mark declaring surrender is concerned, the normal rules apply (see Part A Section 5 of this Manual). Any General Authorization or individual authorization which is made on the Office s Authorization Form empowers the representative to make the declaration of surrender on behalf of the proprietor (cf. Part A, of this Manual), save where the authorization contains an express indication to the contrary. The same is true for an authorization which is not given on the Office s form, unless the authorization is limited to a particular procedural action or contains the express exclusion of a surrender. 6

7 The procedural rules applicable in certain Member States that an authorization does not cover the right to declare the surrender of a trade mark unless expressly specified are not applicable in this context Necessary particulars of a declaration of surrender The declaration of surrender shall contain the particulars referred to in Rule 36 (1) CTMIR. These comprise: - the registration number of the CTM; - the name and address of the proprietor of the CTM; - where surrender is declared only for some of the goods or services for which the mark is registered, either the goods and services for which the surrender is declared or, at the choice of the declarant, the indication of the goods and services for which the mark is to remain registered. For the avoidance of doubt, it is strongly recommended to indicate the list of goods and services which are surrendered, and not those which are remaining. If there is any deficiency on formal matters, including signature or representation, the Office will invite the declarant to remedy the deficiency within a time limit of two months Requirements where a licence or a right in the Community trade mark has been registered Where a licence, or a right in the Community trade mark, is entered on the Register, additional requirements apply. Where a licence is entered on the Register, the proprietor of the CTM shall furnish sufficient proof, to the satisfaction of the Office, that he has informed the licensee of his intention to surrender. If the proprietor proves to the Office that the licensee has given his consent to the surrender, the surrender will be registered immediately upon receipt of that notice. If the proprietor of the CTM furnishes proof that he has merely informed the licensee of his intention to surrender, the Office will inform the proprietor that the surrender will be registered three months after the date on which the Office has received such evidence (Rule 26 (2) CTMIR). The Office will consider a copy of the letter by the proprietor to the licensee as sufficient evidence, provided that there is a reasonable likelihood that the letter was actually sent, and received by the licensee. The same applies to a written statement signed by the licensee that he has been informed. An affidavit by the proprietor is not necessary. The term prove in Article 49 (3) CTMR does not mean full proof, but a reasonable probability, as follows form the other language versions of the CTMR (Rule 36 (3): satisfies ; French version of Article 49 (3): 7

8 justifié, Italian dimostre, German glaubhaft macht ). The documents may be in any of the 20 official languages of the Community; however, the Office may require a translation into the language chosen for the declaration of surrender or, at the choice of the declarant, in any of the other four languages of the Office. If this proof is missing or insufficient, the Office will ask for it within a time limit of one or two months. Where a right in the registered Community trade mark, namely: a right in rem, a levy of execution or a bankruptcy or like proceedings, has been entered on the register, the declaration of surrender shall be accompanied by a declaration of consent to the surrender signed by the proprietor of that right in rem or the creditor of the levy of execution or the authority competent for the bankruptcy or like procedures, or of the representative of that person. That evidence may be presented in any official language of the Community. Where the language of such documents is not the language of the proceedings of registration of the surrender, the Office may require a translation of the documents, within a period specified by it, either in that language or at the choice of the proprietor of the CTM in any of the five languages of the Office. If the evidence is not given, the Office will ask for it, fixing a time limit of two months Competence The examination of a declaration of surrender, as well as its entry into the Register, falls within the competence of the Administration of Trade Marks and Designs Department (Register and Related Databases Service). Where a surrender is declared during an ongoing procedure for revocation or declaration of invalidity before the Office, such declaration will not automatically end that proceeding. Rather, the Cancellation Division will await the decision of the Administration of Trade Marks and Legal Division concerning the registration of the surrender. The Administration of Trade Marks and Legal Division will refer the case back once the surrender is registered or the decision to reject entry of the surrender has become final. Where entry of the surrender in the Register has been made, the Cancellation Division will decide whether the proceeding shall not proceed to judgment or whether there is a sufficient interest of the cancellation applicant in continuing the procedure with the aim of obtaining an expost declaration of invalidity Action taken 8

9 Where the deficiency which is brought to the attention of the declarant is not remedied within the time limit specified in the communication, the Office will reject the entry of the surrender in the Register. Where the Office enters the surrender into the Register, it will inform the proprietor of the CTM accordingly. 3.3 Amendment (other than of the list of goods and services) A distinction is to be made between an amendment of a CTM application and of an amendment of a registered CTM. The amendment of a CTM application is governed by Article 44 CTMR and Rules 13 and 26 CTMIR. The amendment of a registered CTM is governed by Article 48 CTMR, and Rules 25 and 26 CTMIR. This Section of this Manual, and the provisions cited above, concern exclusively such amendments of the CTM application or CTM which are requested by the applicant or proprietor sua sponte, and not such amendments or limitations that are made in the consequence of an examination, cancellation or appeal procedure by virtue of the decision of the examiner, Cancellation Division or Board of Appeal. Likewise, this Section does not apply to corrections of errors in the Office s publications or in the CTM Register; such corrections are to be made ex officio pursuant to Rules 14 and Amendment of a CTM application The amendment requires an application to that end, made in writing. It may be made in the first or second language of the CTM application (Rule 95 (b) CTMIR). This language will be used by the Office, and will have to be used by the applicant, in the procedure relating to the recordal of the amendment Elements that may be amended The following elements of a CTM application may be amended: - the name and address of the applicant or representative (Article 44 (2) CTMR; Rules 26 (1), (6), (7) CTMIR). - errors of wording or of copying, or obvious mistakes, of any other element of the CTM application, including the representation of the mark, provided that such correction does not substantially change the trade mark (Article 44 (2) CTMR). - the list of goods and services; see under 3.4 below. 9

10 Name, address and nationality of applicant or representative Pursuant to Rule 26 IR, the name and address of the applicant or representative may be amended freely, provided that - as regards the name of the applicant, the change is not the consequence of a transfer, - as regards the name of the representative, there is no substitution of a representative by another representative. Pursuant to Rule 84 CTMIR, the indication of the nationality or the State of incorporation of a legal person may also be amended freely, provided that it is not the consequence of a transfer. A change of the name of the applicant in the sense of Rule 26 (1) CTMIR is a change that does not affect the identity of the applicant, whereas a transfer is a change in the identity of the applicant. For details and the applicable procedure in case of doubts as to whether the change falls under Article 17 CTMR, see this Manual on Transfers, Part E, par. 4.2 of this Manual. Likewise, a change of the name of a representative in the sense of Rule 26 (6) CTMIR is limited to a change which does not affect the identity of the appointed representative, e.g., where his name changes as a consequence of a marriage. Rule 26 (6) CTMIR also applies where the denomination of an association of representatives changes. Such a change of name has to be distinguished from the substitution of a representative by another representative, which is subject to the rules governing appointment of representatives; for details, see the Manual on Professional Representation, Part A, par. 5.5, of the Manual. The change of name or address under Rule 26 CTMIR, or of the nationality, may be the result of changed circumstances or of any error made at the point in time of filing. For the change of name and address, an application to the Office must be made by the applicant or his representative and must contain the CTM application number, as well as the name and address of the applicant (in accordance with Rule 1 (1) (b) CTMIR) or the representative (in accordance with Rule 1 (1) (e) CTMIR) both as recorded on the file and as amended. No proof or evidence of the change is necessary. The application for recordal of the change of name or address is not subject to a fee. One single application may be made to make the change in respect of several, specified CTM applications or opposition files, or in respect of all existing files for which the person has been recorded or registered as CTM applicant or proprietor, or as a representative. In that case, the Office changes the bibliographic data of the applicant/proprietor or representative in its database with effect for all existing and, in case the person will refer to his ID number given by the Office, all future proceedings. 10

11 Representation of the mark Prior to registration, the representation of the mark may only be amended - if there was an error of wording or of copying or an obvious mistake, - and if such correction does not substantially change the trade mark (Article 44 (2) CTMR). Such amendments of the representation of the mark in respect of a CTM application are no longer subject to a fee. The first condition must be interpreted objectively and with a view to avoid abuse. The Office will apply No. B.16 of the Joint Statements by the Council and the Commission entered in the minutes of the Council meeting on which the CTMR was adopted (OJ OHIM 1996, 606, 612), according to which the words obvious mistake should be understood as meaning mistakes which obviously require correction, in the sense that nothing else would have been intended than what is offered as the correction. For assessing whether the mistake was obvious, all the documents on file shall be taken into consideration, including a priority document showing the correct version of the mark. Also for the second condition, a strict standard applies because of the principle of legal certainty. While all amendments relating to the mark itself necessarily result in a change, in order for the change to be acceptable it must not lead to a new mark which is substantially different from the mark as filed. Where the amendment of the mark would lead to a different meaning, or where one version has a distinct meaning and the other not, the amendment will not be allowed. For example, an amendment from RANIER into RAINIER will not be allowed, since RANIER has no meaning, whereas RAINIER is a French Christian name, in particular of the Head of State of Monaco. In case of figurative elements, only elements of minor importance can be amended. To give a fresh look to a figurative mark, which is a frequent practice in the brand industry to adapt the appearance of a figurative mark to current design and fashion trends from time to time, will not be allowed. However, any amendment of the mark that would be allowable after registration under Article 48 (2) CTMR will also be allowable in respect of a CTM application Other elements of the application Other elements of the application that may be amended, include details of priority and seniority claims or the description. The conditions that there must have been an error of wording or of copying or an obvious mistake and that the correction may not substantially change the trade mark, apply. 11

12 For example, obvious mistakes in priority claims as regards the indication of the country in which, and the date on which, the earlier mark was filed, may be corrected, since the priority document will show the obviously correct version. Contrary to some decisions of the 3 rd Board of Appeal, the examiners will allow a change of the indication that the mark is a figurative mark to the indication that it is a three-dimensional mark, or vice-versa, provided that that indication was obviously wrong, for example if this can be inferred from the fact that different perspectives of the mark (which is required only for three-dimensional marks) were filed. Where the trade mark claims colours (colour or colours per se, or a figurative mark claiming colours), the Office will also accept an amendment of the application consisting of adding a reference to an internationally accepted colour code. Such indications will not be required by the Office but encouraged in view of the ECJ s judgment in the Libertel case, see Communication of the President of the Office No 6/03 of As the purpose of such an amendment is to ensure that the representation of the trade mark is sufficiently precise, such an amendment is not subject to the conditions that there be an obvious error or mistake in the application. The Office also accepts disclaimers (Article 38 (2) CTMR) voluntarily entered by the CTM applicant during the examination procedure. As the purpose of such an amendment is exclusively related to the future scope of protection of the mark, such an amendment is not subject to the conditions that there be an obvious error or mistake in the application Fee Since the deletion of Article 2 point 6 CTMFR has become applicable, the amendment of a CTM application is no longer subject to a fee Recordal, publication If the amendment is allowed, it will be recorded in the file and in the EUROMARC database. When the CTM application had not yet been published, the publication of the application in the CTM Bulletin will be in the amended form. When the CTM application had already been published, and only if the amendment concerned the list of goods and services or the representation of the mark, the CTM application will be published in its amended form in the CTM Bulletin. All other amendments will not be published separately but only appear in the publication of the registration. The publication of the amended application opens up a new opposition period of three months (Article 42 (2) CTMR). 12

13 3.3.2 Amendment of a registered CTM As concerns a registered CTM, the Regulations provide for the possibility to - apply for a change of name, address or nationality of the CTM proprietor or his representative, and - apply for an amendment of the representation of the mark (alteration of the mark). The Regulations do not provide for the possibility of an amendment of other elements of the CTM registration Amendment of name or address The amendment of the name, address or nationality of the proprietor of a registered CTM or his representative is possible under the same conditions as in respect of a CTM application, save that the application shall be made in any of the five languages of the Office. The amendment will be recorded in the CTM Register and published Alteration of the mark The application to alter the mark, i.e., the representation of the mark, must be made in writing in one of the five languages of the Office. It is subject to a fee of 200 euro; (which has not been abolished by Regulation No 422/2004!) the request is deemed not to have been filed until the fee is paid. The application for alteration must contain (Rule 25 (1) CTMIR): - the registration number of the CTM; - the name and address of the CTM proprietor in accordance with Rule 1 (1) (b) CTMIR; - the indication of the element in the representation of the mark to be altered and that element in its altered version; - a representation of the mark as altered, which complies with the formal requirements laid down in Rule 3 CTMIR. One single application for alteration may be filed in respect of several CTM registrations, provided that both - the proprietor of the CTM and - the element to be altered is the same in each case. However, the fee has to be paid in respect of each registration to be altered. Article 48 (2) CTMR allows the alteration of the representation of the mark only under extremely limited conditions, namely only when - the CTM includes the name and address of the CTM proprietor, and - these are the elements the alteration of which is sought, and - the alteration would not substantially affect the identity of the trade mark as originally registered. 13

14 A strict standard applies. Where the name or address of the proprietor is part of the distinctive elements of the mark, e.g., part of a word mark, an alteration is excluded since the identity of the mark would be substantially affected. An exception can only be accepted for usual abbreviations relating to the legal structure of the company. An alteration of the mark only appears to be possible if the name or address of the proprietor of the CTM appears on a figurative mark, e.g. the label of a bottle, as a subordinate element in small letters. Since such elements would normally not be taken into account in determining the scope of protection or the fulfilment of the use requirement, the question may be raised what benefit an alteration of the mark confers. However, it is exactly the rationale of Article 48 CTMR to exclude any alteration of the registered CTM that could affect its scope of protection or the assessment of the use requirement, so that rights of third parties cannot be affected. Any other element of the mark, even if only a subordinate element in small letters of a descriptive nature on a label of a bottle, such as the indication of the percentage of alcohol of a wine, is excluded Publication of alteration Where the alteration of the registration is allowable, it shall be registered and published; the publication shall contain a representation of the CTM as altered. Within three months from the date of the publication of the alteration, third parties whose rights may be affected by the alteration may challenge the registration thereof. For this procedure, the provisions on the opposition procedure apply mutatis mutandis. 3.4 Limitations of the list of goods and services The applicant may at any time restrict (that is, partially withdraw) the list of goods and services of his Community trade mark application, either on his own volition, or in reply to an objection regarding classification or absolute grounds, or in the course of an opposition proceedings. When the case is pending before the CFI, the restriction must be filed with the Office (not before the CFI). The Office shall then inform the CFI whether or not is has found the restriction valid, and the CFI will eventually draw the necessary consequences for the proceedings before it Procedural admissibility of a restriction The restriction must be procedurally admissible; see above, As a matter of principle, an (unconditional) restriction becomes effective at the date on which it is received by the Office. However, there are two exceptions: - The new wording must not in fact constitute an extension of the list of goods and services. - The restriction must constitute a valid description of goods and services. 14

15 Otherwise, the Office has to refuse the purported restriction and the list of goods and services remains unchanged Valid restriction The restriction must not extend the list of goods and services. There is no extension of the list of goods and services, - where the new term is narrower than the old term in the sense that it claims a specific term falling under a more generic term (Example: alcoholic beverages may be limited to whiskey and gin ), - where specific goods are excepted from a generic term (Example: alcoholic beverages may be limited to alcoholic beverages, except whiskey and gin ); - where a specific good is claimed instead of a semantically broader term under which it falls is claimed, as long as the classification has not yet been established or if both fall into the same class (Example: tea may be limited to medicinal tea as long as no class numbers have been allotted). Incidence of the classification: Once the classification has been properly established (i.e. once the applicant has indicated a class number to the goods, or once the examiner has established the classification with the consent of the applicant), the meaning of a given term is limited to those goods actually falling under that class, and does no longer cover goods in other classes, even if semantically they could be considered to fall under that other term. (Example: tea is in class 30, medicinal tea is in class 5. Once the applicant has claimed tea in class 30, or accepted that tea is classified in class 30, he can no longer restrict to medicinal tea.) Reason: Once the classification is established, the applicant accepts that goods falling into other classes are not covered. If the applicant claims tea without giving a class number, the specification may be amended to tea class 30 and/or medicinal tea class 5, but not backwards. The restriction must also constitute a valid description of goods or services. That is, the restriction is only acceptable if the product or service to which it relates was admissible in the CTM application from the outset. In this regard it is not material whether the restriction is declared in positive or negative terms (for example: acceptable: alcoholic beverages except whisky and gin ). What matters, rather, is whether the restriction defines the goods and services in objective (albeit general) terms, in agreement with the alphabetical list and the structure of the Nice Classification. This point, namely that the restriction must comply with the terminology and structure of the Nice Classification, has been highlighted by the Court of Justice in Postkantoor. Moreover the Court invokes the principle of legal certainty (par. 115 of the judgment) as the underlying rationale for adopting a circumspect approach. The following restrictions are not acceptable: - Those that contain trade marks, - Those that limit in terms of a particular use of the mark, price, conditions of use or marketing of the goods. (Unless the conditions of marketing or use are in 15

16 themselves typical for the nature of the goods and services, for example retail versus wholesale). Examples of unacceptable restrictions: - Restaurant services, only on holiday resorts, or newspapers, only sold at railway stations, or T-shirts as promotional material for soft drinks. Examples of acceptable restrictions: - Catering services for airlines because preparing food for flights is different in nature from preparing food for other occasions. - Clothing for use in the hotel sector to the extent that this means specific professional clothing Class headings vs. individual goods The Office accepts all class headings. It considers a class heading as covering all individual goods falling under that class and in particular all goods mentioned in the Alphabetical List for that class, including those which semantically do not fall under one of the terms of the class headings (see Communication No 4/03 of the President of concerning the use of class headings). Examples: Computer software is covered by the class heading of class 9. The class heading of class 15, musical instruments, covers bags and containers for musical instruments. Consequently, the class heading may be restricted to any of the individual goods which under the Nice Classification fall into that class. The same, when in addition to the class heading individual goods are claimed; that cannot take away from the claim to the class heading as such. Examples: Both Musical instruments and Musical instruments; violins may be restricted to Containers for musical instruments; harps; trumpets Restriction as a means of overcoming an absolute grounds objection? If a restriction is valid this still does not mean that it is able to overcome an absolute grounds objection, in particular on descriptiveness. This will usually only be the case if the goods which remain after the restriction have nothing to do with the goods for which the objection applies. In particular it is not possible, if the CTM application claims a general term and if the objection is that the term is descriptive for a specific term falling under that general term, to exclude that specific term in a negative way. Example: if new born baby is descriptive for dolls because of the fact that this means that the dolls look like new born babies, the specification may not be restricted to dolls, except those looking like new born babies. This was also the situation in the Postkantoor case where the Benelux Office correctly argued that it was not possible to overcome an objection that furniture looks like post office furniture by 16

17 limiting the list to furniture, except looking like, or to be used in, a postal office. It is in this way that par. 114 of the Postkantoor judgment is to be interpreted, which reads: Where registration is applied for in respect of particular goods or services, it cannot be permitted that the competent authority registers the mark only in so far as the goods or services concerned do not possess a particular characteristic. In the above cases, the objection remains because on the one hand the descriptiveness objection is in fact not overcome (that is, the term remains misdescriptive ), and on the other hand, an additional objection applies because the term would become misleading Partial surrender The foregoing applies mutatis mutandis to restrictions of lists of goods and services of a registered CTM (partial surrenders). 3.5 Division Since 25 July 2005, upon entry into force of Articles 44a and 48a CTMR as well as Rules 13a and 25a CTMIR, an application or registration can be divided not only as the result of a partial transfer, but also on the own volition of the CTM applicant or proprietor. The request is subject to a fee of 250 Euro, otherwise it is deemed not to have been filed. It may be made in one of the two languages of the CTM application prior to registration, and thereafter in any of the five languages of the Office. The division is not available for an international application under the Madrid Protocol designating the EC: Their Register is exclusively kept at WIPO. The OHIM does not have the authority to divide an international designation Division of an application Requirements The request must contain (Rule 13a (1) CTMIR): - the file number of the CTM application to be divided; - name and address of the applicant, - the list of goods and services for the divisional application, or, if more than one new application is to be created, for each divisional application; - the list of those goods and services that shall remain in the original CTM application. Furthermore, the goods and services of the divisional application must not overlap with the list of goods and services of the original application. 17

18 Any deficiency in this regard will be notified to the applicant, and two months will be given to remedy, failing which the declaration of division shall be refused (Rule 13a (2) CTMIR). There are also certain periods during which, for procedural economy or to safeguard third party rights, a declaration of division is not admissible. These periods are (Article 44a (2 (a) CTMR, Rule 13a (3) CTMIR): - During the pendency of an opposition, only those goods and services may divided off against which the opposition is not directed. The Office interprets Article 44a (2) CTMR as not only excluding a division in the sense that some of the opposed goods are divided off, with the effect that the opposition proceedings had to be split, but also in the case where the opposed goods are to be divided off. However, in this case, the applicant will be given the opportunity to amend the declaration of division by dividing the other goods and services off, i.e. those which are not opposed. - In addition, division is excluded during the three months following publication of the application, i.e., during the opposition period. Allowing a division in this period would counteract the aim of not splitting an opposition procedure, and frustrate third parties who must rely on the CTM Bulletin to know what they are going to oppose. Declarations of division filed within the four weeks following expiry of the opposition period will not be treated immediately by the Office but only after one month after expiry of the opposition period, because the Office must be sure that all oppositions have been treated and that the division would not be in conflict with them. - Division is again excluded once the invitation to pay the registration fee (Rule 23 (1) CTMIR) has been issued. For all practical purposes, in the period after publication of the application, a division is only admissible if an opposition has been entered against the application and only for the unconstested part. This is exactly the aim of the provision: that the applicant can bring the unconstested goods to fast registration without having to wait for the outcome of a lengthy opposition procedure. - Division is excluded in the period before a filing date has been accorded. That does not necessarily coincide with the first month following filing. In such a case the declaration of division shall be refused immediately (Rule 13a (4) CTMIR has to be interpreted as not requiring prior hearing of the applicant), subject, however, to these two exceptions: - Where the applicant has divided off the goods contested by an opposition, and as long as there is no overlap, he should be invited to amend his request with a view to dividing off the uncontested goods. - Where the declaration of division is filed after dispatch of the invitation to pay the registration fee, the Office will keep the declaration on hold until the mark is registered and subsequently treat it as a declaration of the division of a CTM registration Acceptance 18

19 If the Office accepts the declaration of division, a new application is created as of that date (not retroactively as from the date of the declaration). The new application keeps the filing date as well as any priority or seniority dates. (In fact, the seniority effect will then become a partial one.) All requests and applications submitted, and all fees paid, prior to the date on which the Office receives the declaration of division are also deemed to have been made or paid with regard to the divisional application. Fees duly paid for the original application will, however, not be refunded (Article 44a (6) CTMR). The practical effects of this provision can be exemplified as follows: - Where an application for registration of a license was made, and at the same time the fee for registration of a license was paid, before the Office received the declaration of division, the request is valid for both applications. The license will be recorded for both applications, and no further fees need be paid. - Where a CTM application claiming six classes is to be divided into two applications for 3 classes each, no class fees are payable as from the date the Office receives the declaration of division. However, any fees paid prior to that date cannot be refunded. Where the division is not accepted, the old application remains unchanged. It does not matter whether - the declaration of division was deemed not to have been filed in the absence of the fee; - the declaration was refused because it failed to comply with the formal requirements under Rule 13a (2) CTMIR; - the declaration was found inadmissible because it was filed on a day falling into the one of the periods during which division is excluded. The worst case scenario for the applicant is that the declaration of division is not accepted, but this will never have an incidence on the original application. Later he may repeat the declaration of division subject to a new fee payment whenever this is convenient to him or when he can fulfil the requirements New file, publication A new file has to be created for the divisional application. It must contain all the documents which were on file for the original application, plus all correspondence related to the declaration of division, plus all future correspondence for the new application. Inspection of this file will be unrestricted under general rules, i.e., after publication of the application or upon consent of the CTM applicant. If the declaration of division concerned a CTM application which was not yet published, both the divisional and the original application will be published separately and in the normal way, and without an express reference to each other. 19

20 If the declaration of division concerned a CTM application which was already published, the fact that there was a division shall be published with regard to the original application. In addition, the new application must be published with all the particulars to be published for applications; however, no new opposition period will be opened. By virtue of Article 44a (2) (a) CTMR and Rule 13a (1) (b) CTMIR, a division can only have been admissible for those goods for which an opposition period was already open but not made use of Division of a CTM Registration The declaration of division of a CTM registration is also possible under Article 48a CTMR and Rule 25a CTMIR. The provisions are basically the same, and only the differences are highlighted hereinafter Requirements The formal requirements laid down by Rule 25a (1) CTMIR are the same as for the division of an application pursuant to Rule 13a (1) CTMIR. Due to the different nature of the proceedings, the time periods during which a declaration of division is not admissible, are: - During the pendency of cancellation proceeding before the Office (application for revocation or declaration of invalidity), only those goods and services may divided off against which the cancellation request is not directed. The Office interprets Article 48a (2) CTMR as not only excluding a division in the sense that some of the challenged goods are divided off, with the effect that the cancellation proceedings had to be split, but also in the case where the challenged goods are to be divided off. However, in this case, the CTM proprietor will be given the opportunity to amend the declaration of division by dividing the other goods and services off, i.e. those which are not challenged in the cancellation proceedings. - The same, during the pendency of counterclaim for revocation or declaration of invalidity before a CTM Court. This covers the period starting on the day the counterclaim was lodged before the CTM Court, and ending on the day on which the Office makes a mention of the CTM Court s judgment in the CTM Register pursuant to Article 96 (6) CTMR Acceptance All requests and applications submitted, and all fees paid, prior to the date on which the Office receives the declaration of division are also deemed to have been made or paid with regard to the divisional registration. Fees duly paid for the original registration will, however, not be refunded (Article 48a (6) CTMR). The practical effects of this provision can be exemplified as follows: 20

21 - Where an application for registration of a licence was made, and at the same time the fee for registration of a license was paid, before the Office received the declaration of division, the request is valid for both registrations. The license will be recorded for both registrations, and no further fees need be paid. - Where a CTM registration containing six classes is to be divided into two registrations for 3 classes each, no additional class fees for the renewal are payable as from the date the Office receives the declaration of division. However, any such fees paid prior to that date cannot be refunded New file, publication A new file has to be created for the divisional registration. A publication of the division shall take place in the CTM Bulletin. Rule 84 (3) (w) CTMIR provides that the division of the registration shall be published together with the items referred to in Rule 84 (2) CTMIR in respect of the divisional registration, as well as the list of goods and services of the original registration as amended. 21