5-3-7 Guidelines: TM practice

1. The Court of Justice has confirmed clearly that the Office is under no to examine all the earlier oppositions, rights and legal grounds invoked against the same EUTM application, if one of them suffices to reject the EUTM application.

2. Under Rule 22(5) EUTMIR, the applicant limit its first observations to requesting proof of use.

3. Changes to the mark representation are not .

4. Each party to the proceedings must always have a to defend itself. That means that it should have full access to all material submitted by the other party.

5. It is absolutely that the applicant is able to assess the content of the evidence of use submitted by the opponent.

6. Under Article 8(4a) EUTMR an opposition can be based on an earlier protected designation of origin or a geographical indication provided that a) the opponent is authorised under the relevant law to exercise the rights arising from the invoked designation of origin or geographical indication and b) the protected designation of origin or geographical indication confers the right to the use of a subsequent trade mark.

7. The invalidity applicant to prove that there was bad faith on the part of the EUTM owner at the time of filing the EUTM, for example that the EUTM owner had no intention of using the EUTM or that its intention was to prevent a third party from entering the market.

8. In accordance with Article 15 EUTMR, the mark be used for the goods or services for which it is registered in order to be enforceable.

9. The Office determine ex officio genuine use of earlier marks. It has no role in collecting evidence itself.

10. Since the entry into force of Regulation No 1042/05 there is no to pay a fee to register a transfer.