text: Mark as registered Proposed alteration

text: EUTM No 7 389 687

text: Section 1 Changes in a registration

text: Mark as registered Proposed alteration

text: EUTM No 4 988 556

text: Mark as registered Proposed alteration

text: EUTM No 11 058 823 ROTAM — INNOVATION IN POST PATENT ROTAM — INNOVATION IN POST PATENT TECHNOLOGY TECHNOLOGY’ EUTM No 9 755 307 MINADI

text: MINADI MINADI Occhiali

text: EUTM No 10 009 595 CHATEAU DE LA TOUR SAINTE-ANNE CHATEAU DE LA TOUR SAINT-ANNE EUTM No 9 436 072 SLITONEULTRA SLITONE ULTRA EUTM No 2 701 845

text: EUTM No 3 115 532

text: Mark as registered Proposed alteration

text: EUTM No 7 087 943

text: EUTM No 8 588 329

text: Decision No EX-17-3 of the Executive Director of the Office of 18/09/2017

identifier: Trade mark guidelines, Part E Register operations, Section 1 Changes in a registration

text: Part E Register operations Section 1 Changes in a registration

type: rubrik

text: 1 Surrender

text: Article 57 EUTMR

type: stycke

text: Article 15 EUTMIR

text: 1.1 General principles

text: At any time after registration, a European Union trade mark (EUTM) may be surrendered by its proprietor in respect of some or all of the goods and services. The surrender must be declared to the Office in writing. (For information on the withdrawal of EUTM applications, that is, prior to registration, see the Guidelines, Part B, Examination, Section 1, Proceedings, paragraph 5.1.)

text: 1.2 Legal effect

text: Article 15 EUTMIR

text: Surrenders only become legally effective on the date of entry in the EUTM Register. The registration procedure for the surrender may be suspended during ongoing proceedings (see paragraph 1.4 below). The proprietor’s rights in the registered EUTM, as well as those of its licensees and any other holders of rights in the mark, lapse with an ex nunc effect on the date of the registration of the surrender in the EUTM Register. Therefore, the surrender has no retroactive effect. The surrender has procedural and substantive effects. In procedural terms, when the surrender is entered in the EUTM Register, the EUTM ceases to exist and any proceedings (with the exception of invalidity or revocation proceedings) involving the mark before the Office terminate. The substantive effects of surrender vis-à-vis third parties comprise the EUTM proprietor renouncing any rights arising from its mark in the future. The EUTM proprietor is bound by the declaration of surrender during its registration procedure, provided that the following circumstances are present.

text: 1. No revocation of the declaration reaches the Office on the same day as the receipt of the declaration of surrender. That means that if a declaration of surrender and a communication revoking that declaration reach the Office on the same day (regardless of the hour and minute of their receipt), they cancel each other out. Once it becomes effective, the declaration may not be revoked.

text: 2. The declaration meets all the formal requirements, in particular those identified in paragraph 1.3.7 below.

text: 1.3 Formal requirements

text: 1.3.1 Form and language

text: Article 24 EUTMIR

text: The proprietor must declare the surrender to the Office in writing. The general rules for communication with the Office apply (see the Guidelines, Part A, General Rules, Section 1, Means of Communication, Time Limits). The declaration of surrender must be submitted in writing in one of the five languages of the Office, namely, English, French, German, Italian or Spanish. However, when the declaration of surrender is filed using the form provided by the Office pursuant to Article 65 EUTMDR, the form may, according to Article 146(6) EUTMR, be used in any of the official languages of the European Union, provided that the form is completed in one of the languages of the Office, as far as textual elements are concerned. Where there is an application for revocation or for a declaration of invalidity pending against an EUTM, and the proprietor wishes to surrender the contested EUTM, it must do so by way of a separate document. For more information on the separate document requirement, see the Guidelines, Part C, Opposition, Section 1, Opposition Proceedings, paragraph 4.4.1. 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 inter partes proceedings, that the other party makes a procedural declaration. For instance, during cancellation proceedings the mark may not be (partially) surrendered on the condition that the cancellation applicant withdraws its cancellation action. However, this does not exclude the possibility of an agreement between the parties, or prevent both parties from requesting successive actions (for example, surrender of the trade mark and withdrawal of the cancellation action) in the same communication to the Office.

text: 1.3.2 Fees

text: There is no fee for a declaration of surrender.

text: 1.3.3 Necessary particulars

text: Article 15 EUTMIR

text: The declaration of surrender must contain the particulars referred to in Article 15 EUTMIR. These are: the EUTM registration number;

text: the EUTM proprietor’s name and address or the proprietor’s Office ID number

text: together with the proprietor’s name; where the surrender is only for some of the goods or services for which the mark is

text: registered, either the goods and services for which the surrender is declared or an indication of the goods and services for which the mark is to remain registered or both (see paragraph 1.3.4 below).

text: 1.3.4 Partial surrender

text: An EUTM may be surrendered in part, that is, for some of the goods and services for which it is registered. A partial surrender only becomes effective on the date it is entered in the EUTM Register. For a partial surrender to be accepted, the following two conditions relating to the goods and services must be met: 1. the new wording must not constitute an extension of the list of goods and services; 2. the partial surrender must constitute a valid description of goods and services. For further details on acceptable restrictions and for the practice regarding the declaration referred to in Article 33(8) EUTMR, see the Guidelines, Part B, Examination, Section 3, Classification.

text: 1.3.5 Signature

text: Except where Article 63(1)(a) EUTMDR allows otherwise, the declaration of surrender must be signed by the EUTM proprietor or its duly appointed representative.

text: 1.3.6 Representation

text: The general rules apply (see the Guidelines, Part A, General Rules, Section 5, Professional Representation).

text: 1.3.7 Requirements where a licence or other right in the EUTM has been registered

text: A surrender cannot be registered if third parties have registered rights in the EUTM (such as licensees, pledgees, etc.) without first fulfilling certain additional requirements. Where a licence, or another right in the EUTM, is entered in the EUTM Register, the following additional requirements apply. 1. The EUTM proprietor must submit sufficient proof that it has informed the licensee, pledgee, etc. of its intention to surrender. If the proprietor proves to the Office that the licensee, pledgee, etc. has given its consent to the surrender, the surrender will be registered upon receipt of that notice. If the EUTM proprietor merely submits proof that it has informed the licensee/ pledgee of its intention to surrender, the Office will inform the proprietor that the surrender will be registered 3 months after the date on which the Office received the evidence (Article 57(3) EUTMR). The Office will consider a copy of the communication from the proprietor to the licensee/pledgee as sufficient evidence. The same applies to a written statement signed by the licensee/pledgee that it has been informed. An affidavit by the proprietor is not necessary. The term ‘proves’ in Article 57(3) EUTMR does not refer to absolute certainty but to a reasonable probability, as follows from the other language versions of the Regulations (Article 57(3) EUTMR: Italian version: dimostra, German version: glaubhaft macht). The documents may be in any of the 23 official languages of the European Union. However, the Office may require a translation into the language chosen for the declaration of surrender or, at the choice of the declarant, into any of the five languages of the Office. If no proof has been provided or it is insufficient, the Office will request that it be submitted within 2 months. 2. Where a levy of execution is entered in the EUTM Register, the declaration of surrender must be accompanied by a declaration of consent to the surrender signed by the authority competent for the levy of execution (see the Guidelines, Part E, Register Operations, Section 3, EUTMs and EUDs as Objects of Property, Chapter 2, Licences, Rights in Rem, Levies of Execution, Insolvency Proceedings, Entitlement Proceedings or Similar Proceedings).

text: 3. Where insolvency or similar proceedings are entered in the EUTM Register, the declaration of surrender must be requested by the liquidator (see the Guidelines, Part E, Register Operations, Section 3, EUTMs and EUDs as Objects of Property, Chapter 2, Licences, Rights in Rem, Levies of Execution, Insolvency Proceedings, Entitlement Proceedings or Similar Proceedings).

text: 1.4 Examination

text: 1.4.1 Competence

text: Where surrender (or a partial surrender) is declared during ongoing revocation or invalidity proceedings against the validity of the EUTM that is being surrendered, the Office will suspend the registration of the surrender and invite the cancellation applicant to indicate whether it wishes to continue with the proceedings. For details concerning the treatment of surrenders received during the course of open cancellation proceedings, see the Guidelines, Part D, Cancellation, Section 1, Cancellation Proceedings, paragraph 4.3.1. Where the EUTM is subject to a case pending before the General Court or the Court of Justice, the surrender must be filed at the Office (not before the General Court or the Court of Justice). The Office will then inform the General Court or the Court of Justice whether or not it finds the surrender acceptable and valid.

text: 2 Alteration of a Trade Mark

text: 2.1 General principles

text: Article 54 EUTMR

text: Article 10 EUTMIR

text: This section of the Guidelines and the provisions cited above deal solely with alterations of the EUTM that are requested by the proprietor of its own accord. There is a difference between an amendment of an EUTM application and an alteration of a registered EUTM. The amendment of an EUTM application is governed by Article 49 EUTMR and Article 11 EUTMDR. The alteration of a registered EUTM is governed by Article 54 EUTMR and Article 10 EUTMIR (for more information on amendments of an EUTM application, see the Guidelines, Part B, Examination, Section 2, Formalities). This section does not apply to corrections of obvious errors by the Office in its publications or in the EUTM Register; such corrections are made ex officio, or at the proprietor’s request, pursuant to Article 44(3) and Article 102 EUTMR (for more information, see the Guidelines, Part A, General Rules, Section 6, Revocation of Decisions, Cancellation of Entries in the Register and Correction of Errors).

text: The alteration of a mark enables the representation of a mark to be altered, providing the alteration relates to the proprietor’s name and/or address and does not substantially affect the identity of the trade mark as originally registered. The Regulations do not provide for the possibility of altering other elements of the EUTM registration.

text: 2.2 Formal requirements

text: 2.2.1 Form and language

text: The application to alter the mark, that is, the representation of the mark, must be submitted in writing in one of the five languages of the Office, namely, English, French, German, Italian or Spanish. However, when the application for the registration of an alteration of the mark is filed using the form provided by the Office pursuant to Article 65 EUTMDR, the form may, according to Article 146(6) EUTMR, be used in any of the official languages of the European Union, provided that the form is completed in one of the languages of the Office, as far as textual elements are concerned.

text: 2.2.2 Fees

text: The application to alter the mark is considered not to have been filed until the fee has been paid. The amount of this fee is EUR 200 (see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges).

text: 2.2.3 Mandatory indications

text: The application for alteration must contain: the EUTM registration number;

text: EUTMIR, or the proprietor’s Office ID number together with the proprietor’s name; an indication of the element in the representation of the mark to be altered and the

text: altered version of the element; a representation of the mark as altered that complies with the formal requirements

text: laid down in Article 3 EUTMIR.

text: 2.3 Substantive conditions for alteration

text: Article 54(2) EUTMR allows the alteration of the representation of the mark only under very limited conditions, namely only when: the EUTM includes the EUTM proprietor’s name and/or address, and

text: these are the elements for which alteration is sought, and

text: the alteration would not substantially affect the identity of the trade mark as originally

text: registered. Strict rules apply: where the proprietor’s name or address is part of the distinctive elements of the mark, for example, part of a word mark, an alteration is in principle excluded since the identity of the mark would be substantially affected. A mark may be altered if the EUTM proprietor’s name or address appears on a figurative mark, for example, the label of a bottle, as a subordinate element in small letters. Such elements would normally not be taken into account in determining the scope of protection or the fulfilment of the use requirement. The rationale of Article 54(2) EUTMR is precisely to exclude any alteration of the registered EUTM that could affect its scope of protection or the assessment of the use requirement, so that rights of third parties cannot be affected. No other element of the mark may be altered, not even if it is only a subordinate element in small letters of a descriptive nature, such as the indication of the percentage of alcohol on a label of a bottle of wine. Furthermore, Article 54(2) EUTMR does not allow for the alteration of the list of goods and services (09/07/2008, R 585/2008-2, SAGA, § 16). After registration, the only way to change the list of goods and services is through partial surrender under Article 57 EUTMR (see paragraph 1.3.4 above).

text: 2.3.1 Examples of acceptable alterations

text: 2.3.2 Examples of unacceptable alterations

text: 2.4 Publication

text: Where the alteration of the registration is allowable, it will be registered and published. The publication will contain a representation of the EUTM as altered. Within 3 months of the publication of the alteration (Article 54(5) EUTMR), 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.

text: 3 Changes of Name or Address

text: Both registered European Union trade marks (EUTMs) and EUTM applications may be the subject of changes of name or address of proprietors and representatives. Unless otherwise provided, the practice applicable to EUTMs is also applicable to EUTM applications. The application to register the change must be submitted in one of the five languages of the Office, namely, English, French, German, Italian or Spanish. The change will be entered in the EUTM Register and published in the EUTM Bulletin.

text: The name (including the indication of the legal form) and address of the proprietor or representative may be amended, provided that: as regards the proprietor’s name, the change is not the consequence of a transfer;

text: as regards the representative’s name, there is no substitution of one representative

text: with another. The indication of the nationality of the proprietor (natural persons) or the State of establishment (legal persons) may also be changed or added, provided that it is not the consequence of a transfer. A change of the proprietor’s name within the sense of Article 55(1) EUTMR is a change that does not affect the ownership, whereas a transfer is a change from one proprietor to another. If unsure whether the change falls under Article 20 EUTMR or Article 55(1) EUTMR, see the Guidelines,Part E, Register operations, Section 3, EUTMs and EUDs as objects of property, Chapter 1, Transfer, for details and the applicable procedure. Likewise, the change of a representative’s name within the sense of Article 55(4) EUTMR is limited to a change that does not affect the identity of the appointed representative; for example, where the name changes as a result of marriage. This type of name change must be distinguished from the substitution of one representative for another, which is subject to the rules governing the appointment of representatives. For details, see the Guidelines,Part A, General rules, Section 5, Parties to the proceedings and professional representation. Article 55(4) EUTMR also applies to the change of name of an association of representatives. To register a change of name or address, the proprietor must submit an application to the Office which must comply with the requirements of Article 12 EUTMIR, namely, it must contain the EUTM number as well as the name and address of the proprietor as recorded in the Register. If an ID number has already been given by the Office, it is sufficient to indicate that number and the proprietor’s name. The application must also indicate the new name or address of the proprietor. The same requirements apply to requests to change the name or address of a registered representative. The application to register a change of name or address is free of charge. Normally no proof or evidence of the change is necessary, however, in case of doubt (e.g. discrepancies with the legal form or with the address provided), the Office may ask for proof such as a certificate from a trade register in the case of legal persons, or other official evidence in the case of natural persons. Regarding the differences between ‘legal address’ and ‘address for service’, see the Guidelines,Part A, General rules, Section 5, Parties to the proceedings and professional representatives, paragraph 3.2, Identification of parties to the proceedings (Address). Only one official ‘legal’ address should be indicated, and this will be used as the address for service, unless a different address for service is provided. The proprietor’s name or address will be changed in the proprietor’s ID number and will be registered for all EUTMs, EUDs and other pending proceedings in the name of that proprietor. It will also be entered in the respective Registers. A change of name or

text: address cannot be registered solely for individual or specific portfolios of rights. These rules apply to representatives by analogy. For further information on changes of the name or address of an EUD holder or the citation of a designer or team of designers, see the Guidelines, Examination of applications for registered EU designs, paragraph 6.2.4, Citation of the designer or of the team of designers, and paragraph 11.2.3, Changes in the name and/or address of the applicant/holder and/or its representative or in the citation of the designer or team of designers.

text: 4 Changes in Collective and Certification Trade Mark Regulations

text: According to Articles 79 and 88 EUTMR, the proprietors of EU collective and certification marks must submit to the Office any amended regulations governing use. The application to enter in the EUTM Register an amendment of the regulations governing the use of a collective or certification trade mark must be submitted in writing in one of the five languages of the Office, namely, English, French, German, Italian or Spanish.

text: 4.1 Registration of the amended regulations

text: The amendment of the regulations governing the use of a collective or certification trade mark will not be entered in the EUTM Register if the amended regulations do not satisfy the requirements of Article 75(2) or Article 84 EUTMR, or if they involve one of the grounds for refusal referred to in Article 76 or 85 EUTMR. Where the registration of the amendment of the regulations is accepted, it will be registered and published. The applicant for the amendment will specify the part of the amended regulations to be entered in the EUTM Register, which can be as follows. For collective marks: the EUTM proprietor’s name and address;

text: the purpose of the association or the purpose for which the legal person governed

text: by public law is constituted; the bodies authorised to represent the association or the legal person;

text: the conditions for membership;

text: the persons authorised to use the mark;

text: where appropriate, the conditions governing use of the mark, including sanctions;

text: if the mark designates the geographical origin of goods or services, authorisation for

text: any person whose goods or services originate in the geographical area concerned to become a member of the association. For certification marks: the EUTM proprietor’s name and address;

text: a declaration that the proprietor complies with the requirements laid down in

text: mark, such as the material, mode of manufacture of goods or performance of services, quality or accuracy; the conditions governing the use of the EU certification mark, including sanctions;

text: the persons authorised to use the EU certification mark;

text: how the certifying body is to test those characteristics and to supervise the use of

text: the EU certification mark. Within 3 months of the publication of the amended regulations, third parties whose rights may be affected by the amendment may challenge the registration thereof. For this procedure, the provisions on third party observations apply mutatis mutandis.

text: 5 Division

text: 5.1 General provisions

text: Article 56 and Annex I A(25) EUTMR Article 11 EUTMIR

text: A registration can be split into different parts not only as the result of a partial transfer (see the Guidelines, Part E, Register Operations, Section 3, EUTMs and EUDs as Objects of Property, Chapter 1, Transfer), but also on the EUTM proprietor’s own motion. A division of a trade mark is particularly useful in order to isolate a disputed trade mark for certain goods or services and maintain the registration for the remainder. For information on the division of EUTM applications, see the Guidelines, Part B, Examination, Section 1, Proceedings. Whereas a partial transfer is free of charge and involves a change of ownership, the declaration of division of a trade mark is subject to a fee and the trade mark remains in the hands of the same proprietor. If the fee has not been paid, the declaration of division is considered not to have been filed. The declaration must be made in one of the five languages of the Office. For information on the division of international registrations designating the EU under the Madrid Protocol, please see the Guidelines, Part M, International Marks, paragraph 5, Division.

text: 5.2 Formal requirements

text: 5.2.1 Form and language

text: A declaration of division of an EUTM must be submitted in writing in one of the five languages of the Office namely, English, French, German, Italian or Spanish. However, when the declaration of division of an EUTM is filed using the form provided by the Office pursuant to Article 65 EUTMDR, the form may be used in any of the official languages of the European Union, provided that the form is completed in one of the languages of the Office, as far as textual elements are concerned.

text: 5.2.2 Fees

text: Annex I A(25) EUTMR

text: The declaration is subject to a fee of EUR 250; the declaration is considered not to have been filed until the fee has been paid (see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges).

text: 5.2.3 Mandatory indications

text: The declaration of division must contain: the registration number of the EUTM to be divided;

text: the proprietor’s name and address; if the proprietor has previously been allocated

text: an ID number by the Office, it is sufficient to indicate that ID number together with the proprietor’s name; the list of goods and services for the divisional registration, or, if more than one new

text: registration is to be created, for each divisional registration; the list of goods and services that will remain in the original EUTM.

text: The goods and services must be distributed between the original EUTM and the new EUTM so that the goods and services in the original and the new EUTM do not overlap. The two specifications taken together must not be broader than the original specification. Goods or services that have been objected to or contested (e.g. absolute grounds examination, contested in opposition proceedings, etc.) should remain in the original EUTM. Only those goods and services that are neither contested nor objected to may be split and placed within the new EUTM.

text: Therefore, the indications must be clear, precise and unequivocal. For example, when an EUTM for goods or services in several classes is involved, and the ‘split’ between the old and new registration concerns whole classes, it is sufficient to indicate the respective classes for the new registration or for the remaining one. When the declaration of division indicates goods and services that are explicitly mentioned in the original list of goods and services, the Office will automatically keep the goods and services that are not mentioned in the declaration of division in the original EUTM. For example, the original list contains goods A, B, and C and the declaration of division relates to C; the Office will keep goods A and B in the original registration and create a new registration for C. For the assessment of whether there is a limitation or a broadening of scope of the list, the rules generally applicable in such situations apply (see the Guidelines, Part B, Examination, Section 3, Classification). In all cases it is highly recommended to submit a clear and precise list of goods and services to be divided, together with a clear and precise list of goods and services to remain in the original registration. Furthermore, the original list must be clarified. For example, if the original list related to alcoholic beverages and the division relates to whisky and gin, the original list must be amended by restricting it to alcoholic beverages, except whisky and gin. 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 prescribed by Article 56(2) EUTM and are as follows. While cancellation proceedings are pending before the Office (application for

text: revocation or declaration of invalidity), only those goods and services against which the cancellation request is not directed may be divided from the original EUTM. The Office interprets Article 56(2)(a) EUTMR as not only excluding a division where some of the contested goods are divided from the original EUTM, with the effect that the cancellation proceedings would have to be split, but also as excluding the division of all the contested goods from the original EUTM. However, in this case, the EUTM proprietor will be given the opportunity to amend the declaration of division by dividing the other goods and services from the original EUTM, that is, those that are not contested in the cancellation proceedings. While proceedings are pending before the Boards of Appeal, the General Court

text: or the Court of Justice, only those goods and services not affected by those proceedings may be divided from the original EUTM, due to the suspensive effect of the proceedings. Likewise, while a counterclaim for revocation or declaration of invalidity is pending

text: before an EUTM court, the same conditions apply. This covers the period starting on the day the counterclaim was lodged before the EUTM court and ending on the date on which the Office records the EUTM court’s judgment in the EUTM Register pursuant to Article 128(6) EUTMR.

text: 5.3 Registration

text: If the Office accepts the declaration of division, a new registration is created as of that date and not retroactively from the date of the declaration. The new registration keeps the filing date and, depending on the goods and services, any priority or seniority dates; the seniority effect may become partial. 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 for the resulting divisional registration. However, fees duly paid for the original registration will not be refunded. The practical effects of this provision can be illustrated by the following examples. Where an application for the registration of a licence was submitted and the

text: payment of the fee for its registration was received by the Office prior to the declaration of division, the licence will be registered in the EUTM Register for both the original and the divisional EUTM if the licence covers goods and/or services in the original and divisional EUTM. No further fees need to be paid. Where an EUTM registration containing two classes is to be divided into two

text: registrations, no additional class fees for the renewal are payable as from the date on which the division is entered in the EUTM Register but, instead, two basic renewal fees will be payable, one for each registration.

text: 5.4 New file, publication

text: A new file must be created for the divisional registration. It must contain all the documents that were on file for the original registration, plus all the correspondence related to the declaration of division, as well as all correspondence for the new registration. The division will be published in the EUTM Bulletin.

text: 6 Post-Registration Seniority Claims

text: The proprietor of an earlier trade mark registered in a Member State, including a trade mark registered under international arrangements having effect in a Member State, that holds an identical EUTM for goods or services that are identical to or contained in those for which the earlier trade mark has been registered, may claim the seniority of the earlier trade mark for the EUTM in respect of the Member State in, or for which, it is registered. Concerning the legal effects of a seniority claim, the mandatory indications that must be included in a valid claim, details of the examination of seniority claims, the triple identity requirements and examples of acceptable and unacceptable seniority claims, see the Guidelines,Part B, Examination, Section 2, Formalities, paragraph 13 and its sub-paragraphs, which also apply to post-registration seniority claims. The EUTM proprietor may claim seniority or the cancellation thereof at any time after the registration of the EUTM. Both requests are free of charge. They must be claimed in writing to the Office and must be submitted in one of the five languages of the Office namely, English, French, German, Italian or Spanish. The Office has online application forms available for filing a seniority claim and a seniority claim cancellation. If the claim to seniority is acceptable, the Office will register it and inform the central industrial property office(s) of the Member State(s) concerned. The indication that seniority has been claimed, or the cancellation thereof, will be recorded in the EUTM Register and published in the EUTM Bulletin. In any event, the seniority will lapse if the earlier mark is declared to be invalid or revoked. If the earlier mark is revoked, the seniority will lapse provided that the revocation takes effect prior to the filing date or priority date of the EUTM (Article 39(4) EUTMR, by virtue of Article 40(4) EUTMR).

text: 7 Replacement of an EUTM Registration by an IR

text: Article 4bis Madrid Protocol

text: Rule 21 Regulations under the Protocol

text: In accordance with Article 4bis of the Madrid Agreement and Protocol, the holder of an international registration designating the European Union (IR) may request the Office to take note in its Register that an EUTM registration is replaced by a corresponding IR. The holder’s rights in the European Union will be considered to start from the date of the earlier EUTM registration. Therefore, the Office will enter in the EUTM Register that an EUTM has been replaced by a designation of the EU through an IR, and that entry will be published in the EUTM Bulletin. For more information on replacement, see the Guidelines, Part M, International Marks.


text: Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of 1 Marks (as in force on 01/02/2020).

text: Article 22

text: EUTMIR

identifier: Trade mark guidelines, Part E Register operations, Section 2 Conversion

sprak: en

title: Trade mark guidelines, Part E Register operations, Section 2 Conversion

version: Edition 2026

serie: varumarke

text: Part E Register operations Section 2 Conversion

text: 1 Introduction

text: Conversion is the process of turning a European Union trade mark (EUTM) application or registration into one or more national applications. Its main features are laid down in Articles 139 to 141 EUTMR and Articles 22 and 23 EUTMIR. If an EUTM ceases to exist, it can, depending on the specific reason for this, be converted into trade marks that are valid in certain Member States. Conversion is particularly useful for overcoming possible problems with the EUTM’s unitary character. For example, if the EUTM faces a registrability problem in only one or several countries on absolute grounds or due to an opposition based on an earlier right valid in only one country or several countries, the EUTM applicant can apply to convert the EUTM into individual, national trade mark applications in the countries not affected by these grounds. The EUTM system is based on the principle that the European Union and national trade mark systems are complementary. They are notably linked to each other by the seniority and conversion procedures. The system is construed in such a way that the earlier filing date of a registered right will always prevail in the territory in which it is valid, irrespective of whether the registered trade mark results from a national filing, an international designation or an EUTM application (15/07/2008, R 1313/2006‑G, CARDIVA (fig.) / CARDIMA (fig.); 22/09/2008, R 207/2007‑2, RESTORIA / RESTORIA, § 34). Conversion is a two-tier system involving, firstly, the payment of the conversion fee and the examination of the request for conversion before the Office and, secondly, the conversion procedure itself before the national offices (18/09/2023, R 1508/2019- G, Zara, § 24). Depending on national law, the converted trade mark will either be registered immediately or enter the national examination, registration and opposition procedures in the same way as a national trade mark application. Where the EU is designated in an international registration (IR) and to the extent that the designation has been withdrawn, refused or has ceased to have effect, a request may also be made for conversion into national trade mark applications in one, several or all of the Member States, or through a subsequent designation of the Member States under the Madrid System. Conversion of IRs designating the EU is not to be confused with ‘transformation’, which is a legal feature introduced by the Madrid Protocol (MP) in order to soften the consequences of the five-year dependency period and central attack (ceasing of effect of the basic mark) existing under the Madrid Agreement (see Article 6(3) MP). Transformation allows for a centrally attacked international mark to be transformed into a direct EUTM application, but does not allow for the conversion of an EU designation into national filings. For more information on transformation, see the Guidelines,Part M, International marks.

text: 2 Conversion of EUTMs and IRs Designating the EU

text: 2.1 Conversion of EUTMs

text: The applicant for an EUTM or proprietor of a registered EUTM may request the conversion of its EUTM application or registered EUTM. The request may be for conversion into national trade mark applications in one, several or all of the Member States. With regard to Belgium, Luxembourg and the Netherlands, the term ‘national trade mark applications’ includes Benelux trade mark applications, and ‘national office’, the Benelux Office for Intellectual Property (BOIP). Conversion is possible in the following circumstances (‘grounds for conversion’): where an EUTM application has been finally refused by the Office (Article 139(1)(a)

text: EUTMR) in a decision on absolute or relative grounds for refusal during examination or opposition proceedings; where an EUTM application has been withdrawn by the applicant (Article 49,

text: fees have not been paid within the relevant time limit after filing the application (Article 41(5), Article 139(1)(a) EUTMR); where an EUTM registration ceases to have effect (Article 139(1)(b) EUTMR), that

text: is, in the following circumstances: ○ where an EUTM registration has been validly surrendered (Article 57 EUTMR); ○ where an EUTM registration has not been renewed (Article 53 EUTMR); ○ where an EUTM registration has been declared invalid by the Office or by a European Union trade mark court (Articles 62 and 128 EUTMR); ○ where the rights of the proprietor of an EUTM registration have been revoked by the Office or by an EUTM court (Article 62 EUTMR) — except in the case of revocation for non-use, unless the mark was genuinely used under the laws of the Member State for which conversion has been requested (Article 139(2) EUTMR) (see paragraph 4.1).

text: 2.2 Conversion of IRs designating the EU

text: The holder of an IR designating the EU may request the conversion of the designation of the EU: into national trade mark applications in one, several or all Member States;

text: into subsequent designations of one or more Member States under the Madrid

text: Protocol (‘opting back’), provided that the Member State was a party to either Treaty, not only at the time of the request for conversion, but also on the date of the designation of the EU; into national trade mark applications for some Member States and subsequent

text: designations for other Member States. The same Member State may only be selected once. IR conversion is possible in the following circumstances (‘grounds for conversion’) where the designation of the EU in an IR ceases to have effect: where the effects of an IR designating the EU have been invalidated by the Office or

text: an EUTM court (Article 198 EUTMR, Article 34 EUTMIR); where a limitation of the list of goods and services for the EU has been recorded

text: in the International Register (Rule 25(1)(a)(ii), Rule 27(1) Regulations under the Protocol) (see paragraph 6.2.7 and also the Guidelines, Part M, International Marks, Section 3, The EUIPO as Designated Office, paragraph 3.8, Limitations of the list of goods and services)( ); where a renunciation of the designation of the EU has been recorded in the

text: International Register (Rule 25(1)(a)(iii), Rule 27(1) Regulations under the Protocol); where the Office is informed by WIPO that the IR has not been renewed for the EU,

text: provided that the grace period for renewal is over (Rule 31(4)(b) Regulations under the Protocol); where an IR designating the EU has been finally refused by the Office (Article 78(5)

text: International Register (Rule 25(1)(a)(v), Rule 27(1) Regulations under the Protocol); Conversion may be requested for all or for some of the goods or services to which the abovementioned act or decision relates. Where the abovementioned act or decision relates only to some of the goods and services for which the application was filed or registered, conversion may be requested only for those specific goods or services, or for a part of those goods or services. ‘Opting back’ may not be requested: where the cancellation of the IR has been recorded in the International Register,

text: either totally or partially (Rule 25(1)(a)(v), Rule 27 Regulations under the Protocol). In this case, only national conversion is available for the goods and services affected by the cancellation; Where the IR has not been renewed for all the Contracting Parties designated,

text: and the grace period for the renewal is over (Rule 31(4)(a) Regulations under the Protocol); where the IR has been cancelled because the basic application, the ensuing

text: registration or the basic registration has ceased to have effect (Rule 22 Regulations

text: under the Protocol); only transformation is available in such cases for the goods and services affected by the cancellation (Article 9quinquies MP).

text: 3 Valid EUTM Application as a Condition for Conversion

text: Where conversion is requested on the basis of an EUTM application, conversion is possible only if there is a valid EUTM application (see the Guidelines, Part B, Examination, Section 2, Formalities).

text: 4 Grounds precluding conversion

text: When the relevant Office decision has become ‘final’ (15/10/2024, R 479/2024‑G, Opinion on Conversion and Non-Final Refusal Decisions, § 112-118),conversion will not take place in the following circumstances: where a registered EUTM or IR designating the EU has been revoked on the

text: grounds of non-use and there was no use that would be considered genuine use under the laws of the Member State for which conversion is requested (see paragraph 4.1 below); or where the particular ground for which the EUTM application or registered EUTM

text: or IR designating the EU has ceased to have effect would preclude registration of the same trade mark in the Member State concerned (see paragraph 4.2 below). Therefore, a request for conversion of a rejected EUTM will not be admissible in the Member State to which the grounds for refusal, invalidity or revocation apply. Furthermore, without prejudice to Article 139(2) EUTMR, conversion will not take place where it relates to an application for an EU certification mark or to a registered EU certification mark, and the national law of the Member State concerned does not provide for the registration of guarantee or certification marks pursuant to

text: Article 28 of Directive (EU) 2015/2436

text: approximating the laws of the Member States relating to trade marks.

text: 4.1 Revocation on the grounds of non-use

text: The first reason for precluding conversion is when the rights of the EUTM proprietor or IR holder have been revoked on the grounds of non-use.

text: Conversion will not take place where the rights of the EUTM proprietor or of the IR holder have been revoked on the grounds of non-use, unless the EUTM or IR has been put to use that would be considered genuine use under the laws of the Member State for which conversion is requested. For examination of conversion requests relying on the exception under

text: Article 139(2)

text: (a) EUTMR, see paragraph 6.3.5.1.

text: 4.2 Ground for refusal limited to a Member State or extended to the entire EU

text: The second reason for precluding conversion is related to grounds for refusal, for revocation (other than non-use) or for a declaration of invalidity. It applies when the decision of the Office or of a European Union trade mark court expressly states that the ground for refusal, for revocation or for invalidity applies in respect of a particular Member State, and precludes conversion for that Member State (05/03/2009, R 1619/2008-2, ORANGE (col.), § 23-24). Examples Where an absolute ground for refusal exists only for one language, conversion will

text: not take place in respect of the Member States where that language is an official language. For example, if an absolute ground for refusal was raised in relation to the English-speaking public, conversion would not take place in respect of Ireland and Malta (see

text: Article 140(4)

text: EUTMR). Where an absolute ground for refusal exists only for one Member State, which may

text: be because the trade mark is descriptive or deceptive only in a particular Member State and not in other Member States (see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal), conversion will not take place in respect of that Member State, but may be requested for all the Member States in which the ground for refusal has not been found to exist. Where an EUTM application or IR designating the EU has been refused in an

text: opposition based on an earlier national trade mark in a specific Member State, conversion will not take place in respect of that Member State. When the opposition is based on a number of earlier rights from different Member States but the final decision rejects the EUTM application or the IR designating the EU on the basis of only one of those earlier rights, conversion may be requested for the remaining Member States. For example, if an opposition based on a French, an Italian, and an Irish national right is successful with regard to the Irish national right, and if there is no analysis of the other earlier rights, conversion will not take place for Ireland, but may take place for Italy and France (and all other Member States) (16/09/2004,

text: , Moser Grupo Media, S.L., EU:T:2004:268; 11/05/2006,

text: , Teletech International, EU:T:2006:124). According to

text: Article 140(4)

text: EUTMR, applicable by analogy to IRs designating the

text: been refused or an EUTM registration has been declared invalid on relative grounds based on an earlier EUTM or another European Union industrial property right, this has the effect of excluding conversion for the entire European Union, even if likelihood of confusion exists only in part of it. Where an EUTM or IR designating the EU has been declared invalid in invalidity proceedings on the grounds of

text: Article 59(1)

text: (b) EUTMR (‘bad faith’), this has the effect of excluding conversion for the entire European Union.

text: 4.3 Withdrawal/surrender after a decision has been rendered

text: Where the applicant withdraws the EUTM application or the owner surrenders the EUTM during the appeal period of a decision by first instance and subsequently requests conversion, the request will be forwarded to the respective Member State(s) after confirming that the corresponding fee has been paid. If the applicant or owner files an appeal and subsequently withdraws or limits the refused application, or surrenders (partially or totally) the invalidated or revoked EUTM and then requests a conversion, the withdrawal, limitation or surrender will be forwarded to the competent Board (24/03/2011,

text: P, TiMiKinderjoghurt, EU:C:2011:177, § 43; 22/10/2010, R 463/2009‑4, MAGENTA (col.), § 25-27; 07/08/2013, R 2264/2012‑2, SHAKEY’S). Only after the withdrawal, limitation or surrender has been processed will the conversion either be forwarded as admissible to all the Member States where conversion is requested, or refused, depending on the outcome of the assessment of the request (see also the Guidelines, Part B, Examination, Section 1, Proceedings, paragraph 5.1, Part D, Cancellation, Section 1, Cancellation proceedings, paragraph 4.3 and Part E, Register operations, Section 1, Changes in a registration, paragraph 1). For information on the suspension of the registration of surrenders during cancellation proceedings, see the Guidelines, Part D, Cancellation, Section 1, Cancellation proceedings, paragraph 4.3. The above equally applies to cases where an IR holder requests conversion after renouncing the EU designation or cancelling an IR designating the EU during the appeal period of a decision by first instance or after filing an appeal.

text: 4.4 Competence to decide on grounds precluding conversion

text: The Office will decide whether the request for conversion fulfils the conditions set out in the Regulations in conjunction with any final decisions (their operative part and reasons) that gave rise to the conversion. If one of the grounds precluding conversion exists, the Office will refuse to forward the request for conversion to the respective national office or, in the case of an opting-back

text: conversion, will refuse to forward the conversion to WIPO as a subsequent designation for the Member States for which conversion is precluded.

text: 5 Formal Requirements for the Request for Conversion

text: 5.1 Time limit

text: A general time limit of three months applies for requesting conversion. The start of the time limit depends on the ground for conversion. The time limit may not be extended. Furthermore, the continuation of proceedings cannot be requested for this time limit (

text: Article 105(2)

text: EUTMR). However, restitutio in integrum is, in principle, possible.

text: 5.1.1 Start of time limit where the Office issues a notification

text: Where an EUTM application is deemed to be withdrawn, a request for conversion may be filed within three months from the date of the corresponding notification from the Office.

text: 5.1.2 Start of time limit in other cases

text: In all other cases the time limit of three months for requesting conversion starts automatically, namely: where the EUTM application is withdrawn, on the day the withdrawal is received by

text: the Office; where the EUTM is surrendered, on the day on which the surrender is entered

text: in the EUTM Register, that is, the day on which it becomes effective pursuant to

text: Article 57(2)

text: EUTMR; where protection of the IR has been limited or renounced with effect for the EU,

text: on the day on which it is recorded by WIPO pursuant to Rule 27(1)(b) Regulations under the Protocol; where the EUTM registration was not renewed, on the day following the last day of

text: the period within which a request for renewal may have been submitted pursuant to

text: Article 53(3)

text: EUTMR, that is, six months after the expiry of the registration; where the IR was not renewed with effect for the EU, on the day following the last

text: day on which renewal was still possible before WIPO, pursuant to

text: Article 7(4)

text: MP; where the EUTM application or IR designating the EU is rejected, on the day on

text: which the decision becomes final;

text: where the EUTM or IR designating the EU is declared invalid or revoked, on the

text: day on which the decision of the Office or the judgment of the EUTM court becomes final. A decision of the Office becomes final: when no appeal has been lodged, at the end of the time to appeal referred to in

text: Article 68

text: EUTMR. For example, if an EUTM is rejected by a decision of the Office on absolute grounds for refusal that is deemed to have been notified on 11/11/2011, the decision becomes final on 11/01/2012. The three-month period for requesting conversion ends on 11/04/2012; following a decision of the Boards of Appeal, at the end of the time limit for an

text: appeal to the General Court referred to in

text: Article 72(5)

text: EUTMR, or, where applicable, with the final decision of the Court of Justice. A decision of an EUTM court becomes final: when no appeal has been lodged, at the end of the time limit for appeal under

text: national law; in all other cases, with the final decision of the EUTM court of final (second or third)

text: instance. Regarding subsidiary claims of acquired distinctiveness pursuant to

text: Article 7(3)

text: EUTMR and

text: Article 2(2)

text: EUTMIR, the deadline for conversion does not start to run until a decision on the subsidiary claim of acquired distinctiveness becomes final.

text: 5.2 Request for conversion

text: The request for conversion must be filed at the Office. The online form can be found on the Office’s website at: https://www.euipo.europa.eu/en/online-services. The ‘Application for Conversion of an IR designating the EU’ form can be found on the Office’s website at: https://www.euipo.europa.eu/en/online-services/internationalapplication. This form may also be used for opting back. The Office will send the conversion data to WIPO in electronic format. Using the forms made available by the Office enables it to extract the relevant information concerning the converted EUTM and the data concerning the applicant and representative from its database and to transmit them, together with the Conversion Form, to the designated offices.

text: Article 22

text: EUTMIR

text: Applicants or their representatives must provide the following information (

text: Article 22

text: EUTMIR). The name and address of the applicant for conversion, that is, the applicant or

text: proprietor of the EUTM application or registration, or the holder of the IR; The filing number of the EUTM application or the registration number of the EUTM

text: or of the IR; The indication of the ground on which conversion is requested:

text: ○ where conversion is requested following the withdrawal of the application, the date of withdrawal must be indicated; ○ where conversion is requested following failure to renew the registration, the date on which protection expired must be indicated; ○ where conversion is requested following the surrender of an EUTM, the date on which it was entered in the Register must be indicated; ○ where conversion is requested following a partial surrender, the goods or services for which the EUTM no longer has protection and the date on which the partial surrender was entered in the Register must be indicated; ○ where conversion is requested following a limitation, the goods or services for which the EUTM application no longer has protection and the date of limitation must be indicated; ○ where conversion is requested because the mark ceases to have effect as a result of a decision of a European Union trade mark court, the date on which that decision became final must be indicated, and a copy of that decision, which may be in the language in which the decision was given, must be submitted; ○ where conversion is requested because an IR designating the EU has been finally refused by the Office, the date of the decision must be indicated; ○ where conversion is requested because the effects of an IR designating the EU have been declared invalid by the Office or by an EUTM court, the date of the decision of the Office or the date on which the judgment of the EUTM court became final must be indicated, with a copy of the judgment attached; ○ where conversion is requested because the designation of the EU has been renounced or cancelled before WIPO, the date on which it was recorded by WIPO must be indicated; ○ where conversion is requested because the IR designating the EU has not been renewed, and provided that the grace period for renewal is over, the date on which the protection expired must be indicated. The indication of the Member State or the Member States for which conversion is

text: requested; for an IR, it must also be indicated whether conversion is requested into a national application for that Member State or into a designation of the Member State under the Madrid Protocol. With regard to Belgium, the Netherlands and Luxembourg, conversion may be requested only for these three countries together, not separately. The conversion form made available by the Office only allows

text: for Belgium, the Netherlands and Luxembourg to be designated together. If the applicant indicates only one of these three countries, the Office will consider it to be a request for conversion for Belgium, the Netherlands and Luxembourg and will forward the request to the Benelux Office for Intellectual Property (BOIP); Where the request does not relate to all of the goods or services for which the

text: application has been filed or for which the EUTM has been registered, an indication that it relates only to a part of the goods and services for which the application was filed or registered together with an indication of the goods and services for which conversion is requested; An indication that conversion is requested for different goods and services with

text: respect to different Member States, together with an indication of the respective goods and services for each Member State. The request for conversion may also contain the appointment of a representative before a designated national office, if the relevant boxes in the Annex to the Conversion Form are ticked. This indication is voluntary and is not relevant for the conversion procedure before the Office. However, it will be useful for the national offices when they receive the request for conversion, as they will be able to communicate immediately with a representative who is authorised to practise before them (see paragraph 6 below).

text: 5.3 Language

text: Where the request for conversion is made in respect of an EUTM application, it must be filed in the language in which the EUTM application was filed or in the second language indicated therein. Where the request for conversion is made in respect of an IR designating the EU before a statement of grant of protection has been issued pursuant to

text: Article 79

text: EUTMDR, the request must be filed in the language in which the international application was filed with WIPO or in the second language indicated therein.

text: Where the request is made in respect of an EUTM registration, it may be filed in any of the five languages of the Office. Where the request for conversion is made in respect of an IR designating the EU after a statement of grant of protection has been issued, the request may be filed in any of the five languages of the Office, except in the case of an ‘opting-back’ conversion, when the request must be filed in English, French or Spanish. However, when the request for conversion is filed using the form provided by the Office pursuant to

text: Article 65

text: EUTMDR, the form may be used in any of the official languages of the Union, provided that textual elements are completed in one of the languages of

text: the Office. This concerns, in particular, the list of goods and services in a request for partial conversion. In the event of a partial ‘opting-back’ conversion, the list of goods and services must be filed in English, French or Spanish.

text: 5.4 Fees

text: The request for conversion, including for conversion of an IR designating the EU, is subject to payment of a fee of EUR 200. The request will not be considered to be filed until the conversion fee has been paid. This means that the conversion fee must be paid within the abovementioned time limit of three months. A payment made after expiry of that period will be considered to have been made in due time if the person concerned submits evidence that the payment was made to a bank or a transfer order placed, in a Member State and within the period of three months and if, at the time of payment, a surcharge of 10 % of the total amount due was paid (see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges).

text: 6 Examination by the Office

text: 6.1 Stages of the procedure – competence

text: The Office will deal with requests for conversion by: registering and publishing the receipt of a request for conversion;

text: examining the request; and

text: transmitting the request to the designated offices or rejecting it as inadmissible.

text: 6.2 Publication of the request and entry in the Register

text: Regardless of the outcome, a request for conversion that is considered to have been filed because the required fee has been paid (and provided that the request for conversion is of a published EUTM application or a registered EUTM), the Office will make an entry in the Register of European Union trade marks recording the receipt of the request for conversion. This request for conversion is also published in the EUTM Bulletin if the EUTM application has already been published in accordance with

text: Article 44

text: EUTMR. The entry and the publication exclusively reflect that a request has been filed (a record of the receipt of a request for conversion). The entry in the Register and the publication of the receipt of the request for conversion contain the indications referred to in

text: Article 23

text: EUTMIR and, unless it concerns an IR designating the EU, must refer to the previous publication in the EUTM Bulletin and the date of the application for conversion. The lists of goods and services for which conversion is requested will not be published if the conversion is for an IR designating the EU.

text: 6.3 Examination

text: Conversion is an administrative procedure. The examination carried out by the Office is confined to an admissibility check of the request for conversion, essentially verifying compliance with the following formal requirements: fees

text: time limit

text: language

text: formalities

text: grounds for conversion

text: representation

text: partial conversion.

text: 6.3.1 Fees

text: The Office will examine whether the conversion fee has been paid within the applicable time limit. Where the conversion fee has not been paid within the applicable time limit, the Office will inform the applicant that the request for conversion is considered not to have been filed. Any fees paid late will be reimbursed.

text: 6.3.2 Time limit

text: When the request for conversion is considered to have been filed because the conversion fee has been paid within the applicable time limit (see paragraph 6.3.1 above), the Office will examine if the request has been filed within the time limit of three months. Where the request for conversion was not filed within the relevant time limit but payment was received on time, the Office will reject the request as inadmissible. Any fees paid will not be reimbursed.

text: 6.3.3 Language

text: The Office will examine whether the request has been filed in the correct language. When the request is filed in a language that is not one of the acceptable languages for the conversion procedure (see paragraph 5.3 above), the Office will send a deficiency letter to the applicant and specify a period within which it may amend the request for conversion. If the applicant fails to respond, the request will not be dealt with and will be considered not to have been filed. Any fees paid will not be reimbursed.

text: 6.3.4 Formalities

text: The Office will examine whether the request complies with the formal requirements laid down in

text: Article 22

text: EUTMIR (see paragraph 5.2).

text: Where the applicant for conversion has not used the Conversion Form made available by the Office, and where the deficiency lies in the applicant not having indicated the elements referred to in

text: Article 22

text: (b), (d) or (e) EUTMIR, either the applicant will be invited to submit the missing information or, where the information may be readily ascertained from data available to the Office, the Office will be considered as having been authorised to make available the relevant extracts from its database to the designated offices.

text: 6.3.5 Grounds for conversion

text: The Office will examine: whether one of the grounds for conversion referred to in paragraph 2 exists;

text: whether one of the grounds precluding conversion referred to in paragraph 4 exists;

text: for an opting-back conversion, whether it would have been possible at the date of

text: the IR to designate the Member State concerned in an international application; for partial conversion, whether the goods and services to be converted were in fact

text: contained in, and do not go beyond, the goods and services of the EUTM or IR designating the EU when it lapsed or ceased to have effect (see paragraph 6.2); for partial conversion in the sense that part of the EUTM or IR designating the EU

text: remains valid, if the goods and services to be converted overlap with the goods and services for which the mark remains valid (see paragraph 6.2). The aim of these last two examination steps is to avoid conversion for more or broader goods and services than have been refused or cancelled. When the request for conversion does not comply with any of the other mandatory elements and indications referred to in paragraph 4, the Office will send a deficiency letter to the applicant and specify a period within which it may amend the request for conversion. If the applicant fails to remedy the deficiencies within the period specified by the Office, the request will be considered inadmissible. Any fees paid will not be reimbursed.

text: In the specific case of an EUTM having been revoked by the Office due to non-use and for which the EUTM proprietor files a request for conversion to benefit from the exception provided by

text: Article 139(2)

text: (a) EUTMR, the Office's examination is limited to verifying that the conditions of

text: Article 139(2)

text: (a) EUTMR are fulfilled for the requested Member State (18/09/2023, R 1508/2019‑G, Zara, § 27). The examination of conversion requests is a separate administrative procedure from the original action for revocation of the EUTM and therefore different legal standards apply. Whereas the legal standard of

text: Article 58(1)

text: (a) EUTMR applies for revocation of the EUTM, under

text: Article 139(2)

text: (a) EUTMR, the legal standard is that of the national

text: legal framework of the Member State for which conversion is requested that applies (18/09/2023, R 1508/2019‑G, Zara, § 51, 52, 58, 61). A conversion applicant relying on the exception provided by

text: Article 139(2)

text: (a) EUTMR, must demonstrate genuine use under the national law of the Member State for which conversion is requested. In order to do so, the conversion applicant is entitled to submit new evidence of use together with the conversion request and/or refer to the evidence of use submitted in the original revocation procedure or other proceedings (see the Guidelines, Part A, General rules, Section 10, Evidence, paragraph 3, References to other proceedings and 18/09/2023, R 1508/2019‑G, Zara, § 54). The Office is not obliged to request additional evidence (18/09/2023, R 1508/2019‑G, Zara, § 72). A conversion applicant must also clearly identify the content of the national substantive and procedural law relied upon, including the relevant jurisprudence on its interpretation. Moreover, it must explain why the use of a trade mark would be considered genuine use under the laws of that Member State. The conversion applicant, therefore, bears the burden of proving that the evidence would be considered sufficient to prove genuine use under the laws of that Member State (18/09/2023, R 1508/2019‑G, Zara, § 51, 52, 63, 64, 69). The Office will evaluate all the evidence of use submitted in the course of the conversion proceedings in accordance with the substantial and procedural requirements of that Member State (18/09/2023, R 1508/2019‑G, Zara, § 63).

text: 6.3.6 Representation

text: Articles

text: and

text: EUTMR The general rules on representation apply (see the Guidelines, Part A, General Rules, Section 5, Parties to the Proceedings and Professional Representation). The applicant for conversion may appoint a new or an additional representative (legal practitioner or Office professional representative) for the conversion procedure. Any authorisation to act on behalf of the applicant or proprietor extends only to acts before the Office. Whether a representative appointed for proceedings before the Office may act before the national office in respect of the resulting national application and, if so, whether they need to submit an additional authorisation, is determined by the national law concerned.

text: 6.3.7 Partial conversion

text: Article 22

text: (e) EUTMIR

text: Where conversion is requested only for some of the goods and services, or for different goods and services for different Member States (‘partial conversion’), the Office will

text: examine whether the goods and services for which conversion is requested are contained within the goods and services for which the ground for conversion applies. The same criteria apply for this assessment as for similar procedural situations, such as the restriction of an application or partial refusal in opposition proceedings. Where an application is refused in part or a registration is declared invalid or revoked in part, conversion may be requested only for the goods or services for which the application was refused or the registration was declared invalid or revoked, and not for the goods or services for which the application or registration remains valid. Where an application is limited, or a registration is partially surrendered, conversion may be requested only for the limited or partially surrendered goods or services, and not for the goods or services for which the application or registration remains valid. However, please refer to paragraph 4.3 above when such a limitation or partial surrender takes place following a decision. The applicant must indicate in the abovementioned cases the goods and services for which conversion is requested. Expressing the limitation in a negative way, such as by using expressions of the type ‘beverages with the exception of ...’, is admissible in the same way that such an expression is admissible when filing or restricting an EUTM application or partially surrendering an EUTM registration (see the Guidelines, Part B, Examination, Section 3, Classification).

text: 6.4 Transmission to designated offices

text: Once the Office has completed examination of the request for conversion and has found it to be admissible, it will transmit the request without delay to the designated offices. The transmission will be made irrespective of whether any required publication has already taken place. The Office will send a copy of the request for conversion to the designated offices and make available to them an extract of its database containing the data referred to in

text: Article 111(2)

text: EUTMR of the converted EUTM or IR. Any central industrial property office to which the request for conversion is transmitted may obtain from the Office any additional information concerning the request, which will enable that office to make a decision regarding the national trade mark resulting from the conversion.

text: At the same time, the Office will inform the applicant for conversion of the date of transmission to the designated offices. In the case of an opting-back conversion, WIPO will deal with the request as a subsequent designation in accordance with Rule 24(6), (7) Regulations under the Protocol.

text: If a national office is the designated office, conversion will result in a national application or registration.

text: The national law in force for the Member States concerned may provide that the request for conversion be subject to one, or all, of the following requirements: payment of a national application fee;

text: filing of a translation of the request and its accompanying documents in one of the

text: official languages of the Member State in question. In particular, for applications for conversion prior to publication of the EUTM, the national office will usually require a translation of the list of goods and services; indication of an address for service in the Member State in question;

text: submission of a representation of the mark in a number of copies specified by that

text: Member State. National rules on the appointment of a domestic representative apply. Where use is made of the option in the online form (Recordal) to indicate a national representative for the purposes of the procedure before a specific national office, that national office will be in a position to communicate directly with the representative indicated so no separate communication to appoint a domestic representative will be necessary.

text: National law may not subject the request for conversion to any formal requirements different from or additional to the requirements provided for in the EUTM Regulations.

text: 7 Effects of Conversion

text: In each Member State concerned, the national trade mark application resulting from the conversion will enjoy the filing date or the date of priority, if any, of the EUTM application, as well as the seniority of an earlier trade mark with effect for that Member State validly claimed for the EUTM application or registration under Article

text: or

text: EUTMR. For information on conversion of an EUTM into national trade mark applications for new Member States, see the Guidelines, Part A, General Rules, Section 9, Enlargement. In the event of an opting-back conversion, the international application resulting from the subsequent designation of the Member State under Rule 24(6)(e) and (7) Regulations under the Protocol will enjoy the original date of the IR designating the EU, that is, either the actual date of the IR (including, if appropriate, its priority date) or the date of the subsequent designation of the EU.

text: However, there is no harmonised procedure for how national offices will proceed with the examination of the converted EUTM. As mentioned in the introduction, the conversion procedure is a two-tier system, where the second tier, the conversion procedure itself, is dealt with by the national offices. Depending on national law, the converted trade mark will either be registered immediately or will enter the national examination, registration and opposition procedure like any other national trade mark application. National applications deriving from the conversion of an earlier EUTM (application) are considered to come into existence as soon as a valid request for conversion is filed. Therefore, in opposition proceedings, such rights will be considered properly identified for admissibility purposes under

text: Article 2(2)

text: (b)(i) EUTMDR if the opponent indicates the number of the EUTM (application) under conversion and the countries for which it has requested conversion. When, during opposition or invalidity proceedings on relative grounds, the EUTM application (or EUTM) on which the opposition is based ceases to exist or the list of goods and services is restricted, but at the same time a request for conversion is filed, the opposition or invalidity proceedings can continue. This is because national trade mark registrations resulting from a conversion of an EUTM application (or EUTM) can constitute the basis of the opposition or invalidity procedure originally made on the basis of that EUTM application or registration (15/07/2008, R 1313/2006-G, cardiva (fig.) / cardima (fig.)) (see also the Guidelines, Part C, Opposition, Section 1,Opposition Proceedings, paragraph 4.2.2.2).