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Communication No 8/99 of the President of the Office of 8 November 1999 concerning the keeping of files

Both in ex parte and in inter partes cases, parties occasionally file original items such as catalogues or invoices. Attention is drawn to the fact that these documents become part of the files of the respective Community trade mark application or registration, in the same way as any other document, and therefore cannot be returned to the person who has submitted that document. Requests to that end will be refused by the Office.

The Office accepts all documents in the form of originals or photocopies or telecopy transmissions (cf. Rule 80 of the Implementing Regulation). The files are kept in electronic form. The documents are immediately converted into electronic files. Access to the original documents filed by the party to the proceedings, which remain for the time being in the archive, is not granted (cf. paragraph 7.5.8.2 of the Guidelines on the Inspection of Files, OJ 1998, 804). Parties to the proceedings who wish to avoid giving away original documents because the originals are needed for their own purposes or because they contain, in addition to the information required for the purposes of the proceedings before the Office, confidential information on other issues, are reminded that they have the following three options (cf. paragraph 7.4.1.3 of the Guidelines on Inspection of Files). They can either file photocopies only of the relevant pages of the respective original document, or they can file photocopies of the original documents in which certain passages have been blacked out. They may also request that a particular part of the file be excluded from inspection because of a special interest in keeping a part of the file confidential, pursuant to Rule 88(c) of the Implementing Regulation; in this case, however, the relevant document will be communicated to the other party of an inter partes proceeding (cf. paragraph 7.4.2 of the Guidelines on Inspection of Files).

It is also recalled that it is possible to obtain a certified or uncertified copy of the respective original document, subject to the payment of a fee of 30 Euro (in case of an uncertified copy: 10 Euro) plus 1 Euro for each page exceeding 10 (Article 140(2)(11) of the Community Trade Mark Regulation, Rule 89 (4) of the Implementing Regulation, and Article 2(28)(b) of the Fees Regulation).


Jean-Claude Combaldieu

President