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Procedure : 2013/0089(COD)
Document stages in plenary
Document selected : A7-0032/2014

Texts tabled :

A7-0032/2014

Debates :

PV 24/02/2014 - 18
CRE 24/02/2014 - 18

Votes :

PV 25/02/2014 - 5.10

Texts adopted :

P7_TA(2014)0119

Texts adopted
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Tuesday, 25 February 2014 - Strasbourg Final edition
Laws of the Member States relating to trade marks ***I
P7_TA(2014)0119A7-0032/2014
Resolution
 Consolidated text

European Parliament legislative resolution of 25 February 2014 on the proposal for a directive of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks (recast) (COM(2013)0162 – C7-0088/2013 – 2013/0089(COD)) (Ordinary legislative procedure – recast)

The European Parliament,

–  having regard to the Commission proposal to Parliament and the Council (COM(2013)0162),

–  having regard to Article 294(2) and Article 114 of the Treaty on the Functioning of the European Union, pursuant to which the Commission submitted the proposal to Parliament (C7‑0088/2013),

–  having regard to Article 294(3) of the Treaty on the Functioning of the European Union,

–  having regard to the opinion of the European Economic and Social Committee of 11 July 2013(1) ,

–  having regard to the Interinstitutional Agreement of 28 November 2001 on a more structured use of the recasting technique for legal acts(2) ,

–  having regard to Rules 87 and 55 of its Rules of Procedure,

–  having regard to the report of the Committee on Legal Affairs and the opinions of the Committee on International Trade and the Committee on the Internal Market and Consumer Protection (A7-0032/2014),

A.  whereas, according to the Consultative Working Party of the legal services of the European Parliament, the Council and the Commission, the proposal in question does not include any substantive amendments other than those identified as such in the proposal and whereas, as regards the codification of the unchanged provisions of the earlier acts together with those amendments, the proposal contains a straightforward codification of the existing texts, without any change in their substance;

1.  Adopts its position at first reading hereinafter set out, taking into account the recommendations of the Consultative Working Party of the legal services of the European Parliament, the Council and the Commission;

2.  Calls on the Commission to refer the matter to Parliament again if it intends to amend the proposal substantially or replace it with another text;

3.  Instructs its President to forward its position to the Council, the Commission and the national parliaments.

(1) OJ C 327, 12.11.2013, p. 42.
(2) OJ C 77, 28.3.2002, p. 1.


Position of the European Parliament adopted at first reading on 25 February 2014 with a view to the adoption of Directive 2014/.../EU of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks (recast)
(Text with EEA relevance)
P7_TC1-COD(2013)0089

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty on the Functioning of the European Union, and in particular Article 114(1) thereof, [Am. 1]

Having regard to the proposal from the European Commission,

After transmission of the draft legislative act to the national Parliaments,

Having regard to the opinion of the European Economic and Social Committee(1) ,

Acting in accordance with the ordinary legislative procedure(2) ,

Whereas:

(1)  A number of amendments are to be made to Directive 2008/95/EC of the European Parliament and of the Council(3) . In the interests of clarity, that Directive should be recast.

(2)  Directive 2008/95/EC has harmonised central provisions of substantive trade mark law which at the time of adoption were considered as most directly affecting the functioning of the internal market by impeding the free movement of goods and the freedom to provide services in the Union.

(3)  Trade mark protection in the Member States coexists with protection available at Union level through Community trade marks which are intellectual property rights unitary in character and valid throughout the Union as laid down in Council Regulation (EC) No 207/2009(4) . Coexistence of trade mark systems at national and Union level in fact constitutes a cornerstone of the Union’s approach to intellectual property protection.

(4)  Further to the Commission's Communication of 16 July 2008 on an Industrial Property Rights Strategy for Europe(5) , the Commission carried out a comprehensive evaluation of the overall functioning of the trade mark system in Europe as a whole, covering Union and national levels and the interrelation between each other.

(5)  In its conclusions of 25 May 2010 on the future revision of the Trade Mark system in the European Union(6) , the Council called on the Commission to present proposals for the revision of Regulation (EC) No 207/2009 and Directive 2008/95/EC. In doing so, the revision of the latter should include measures to make it more consistent with Regulation (EC) No 207/2009 and, which would thus reduce the areas of divergence within the trade mark system in Europe as a whole, while maintaining national trade mark protection as an attractive option for applicants. In this context, the complementary relationship between the European Union trade mark system and national trade mark systems should be ensured . [Am. 2]

(6)  The Commission concluded in its Communication ‘A Single Market for Intellectual Property Rights’ of 24 May 2011(7) that in order to meet increased demands from stakeholders for faster, higher quality, more streamlined trade mark registration systems, which are more consistent, user friendly, publicly accessible and technologically up-to-date, there is a necessity to modernise the trade mark system in the Union as a whole and adapt it to the Internet era.

(7)  Consultation and evaluation for the purpose of this Directive has revealed that in spite of the previous partial harmonisation of national laws, the European business environment remains very heterogeneous, limiting the accessibility to trade mark protection overall and thus having a detrimental effect on competitiveness and growth.

(8)  In order to serve the objective of fostering and creating a well functioning single market and to facilitate acquiring and protecting trade marks in the Union, it is therefore necessary to go beyond the limited scope of approximation achieved by Directive 2008/95/EC and extend approximation to all aspects of substantive trade mark law governing trade marks protected through registration as covered by Regulation (EC) No 207/2009.

(9)  For the purpose of making trade mark registrations throughout the Union easier to obtain and administer, it is essential to approximate not only provisions of substantive law but also procedural rules. Therefore, principal procedural rules in the Member States and in the European Union trade mark system, including those in respect of which divergences cause major problems for the functioning of the internal market, should be aligned. As regards procedures under national law it is sufficient to lay down general principles, leaving the Member States free to establish more specific rules.

(10)  It is fundamental to ensure that registered trade marks enjoy the same protection under the legal systems of all the Member States, and that the protection of trade marks at the national level is the same as the protection of European Union trade marks. In line with the extensive protection granted to European Union trade marks which have a reputation in the Union, extensive protection should also be granted at national level to all registered trade marks which have a reputation in the Member State concerned. [Am. 3. This amendment applies throughout the text]

(11)  This Directive should not deprive the Member States of the right to continue to protect trade marks acquired through use but should take them into account only in regard to their relationship with trade marks acquired by registration.

(12)  Attainment of the objectives at which this approximation of laws is aiming requires that the conditions for obtaining and continuing to hold a registered trade mark be, in general, identical in all Member States.

(13)  To this end, it is necessary to list examples of signs which may constitute a trade mark, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. In order to fulfil the objectives of the registration system for trade marks, which are to ensure legal certainty and sound administration, it is also essential to require that the sign is be capable of being represented in the register in a manner which allows for a is clear, precise determination of the subject of protection, self-contained, easily accessible, durable and objective . A sign should therefore be permitted to be represented in any appropriate form, and thus not necessarily by graphic means, as long as the representation uses generally available technology and offers satisfactory guarantees to that effect. [Am. 4]

(14)  Furthermore, the grounds for refusal or invalidity concerning the trade mark itself, including the absence of any distinctive character, or concerning conflicts between the trade mark and earlier rights, should be listed in an exhaustive manner, even if some of these grounds are listed as an option for the Member States which should therefore be able to maintain or introduce those grounds in their legislation.

(15)  In order to ensure that the levels of protection afforded to geographical indications by other instruments of Union law are applied in a uniform and exhaustive manner in the examination of absolute and relative grounds for refusal throughout the Union, this Directive should include the same provisions in relation to geographical indications as contained in Regulation (EC) No 207/2009.

(16)  The protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, should be absolute in the case of identity between the mark and the sign and the goods or services. The protection should apply also in the case of similarity between the mark and the sign and the goods or services. It is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion. The likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, should constitute the specific condition for such protection. The ways in which likelihood of confusion may be established, and in particular the onus of proof, should be a matter for national procedural rules which should not be prejudiced by this Directive.

(17)  In order to ensure legal certainty and full consistency with the principle of priority, under which an earlier registered trade mark takes precedence over later registered trade marks, it is necessary to lay down that the enforcement of rights conferred by a trade mark should be without prejudice to the rights of proprietors acquired prior to the filing or priority date of the trade mark. This is in conformity with Article 16(1) of the Agreement on trade related aspects of intellectual property rights of 15 April 1994 (hereinafter: ‘TRIPS Agreement’)(8) .

(18)  It is appropriate to provide that an infringement of a trade mark can only be established if there is a finding that the infringing mark or sign is used in the course of trade for purposes of distinguishing goods or services as to their commercial origin. Uses for other purposes should be subject to the provisions of national law.

(19)  In order to ensure legal certainty and clarity, it is necessary to clarify that not only in the case of similarity but also in case of an identical sign being used for identical goods or services, protection should be granted to a trade mark only if and to the extent that the main function of the trade mark, which is to guarantee the commercial origin of the goods or services, is adversely affected. [Am. 5]

(20)  Infringement of a trade mark should also comprise the use of the sign as a trade name or similar designation as long as the use is made for the purposes of distinguishing goods or services as to their commercial origin.

(21)  In order to ensure legal certainty and full consistency with specific Union legislation, it is appropriate to provide that the proprietor of a trade mark should be entitled to prohibit a third party from using a sign in a comparative advertising where such comparative advertising is contrary to Directive 2006/114/EC of the European Parliament and of the Council(9) .

(22)  With the aim of strengthening trade mark protection and combatting counterfeiting more effectively, and without prejudice to WTO rules, in particular Article V of the GATT on freedom of transit, the proprietor of a registered trade mark should be entitled to prevent third parties from bringing goods into the customs territory of the Member State without being released for free circulation there, where such goods come from third countries and bear without authorization authorisation a trade mark which is essentially identical to the trade mark registered in respect of such goods. This should be without prejudice to the smooth transit of generic medicines, in compliance with the international obligations of the European Union, in particular as reflected in the 'Declaration on the TRIPS agreement and public health' adopted by the Doha WTO Ministerial Conference on 14 November 2001. [Am. 55]

(22a)  The proprietor of a trade mark should have the right to take relevant legal actions, including inter alia the right to request national customs authorities to take action in respect of goods which allegedly infringe the proprietor's rights, such as detention and destruction in accordance with Regulation (EU) No 608/2013 of the European Parliament and of the Council (10) . Customs authorities should carry out the relevant procedures laid down in Regulation (EU) No 608/2013 at the request of a rightholder and on the basis of risk analysis criteria. [Am. 7]

(22b)  Article 28 of Regulation (EU) No 608/2013 provides that a right holder is to be liable in damages towards the holder of the goods where, inter alia, the goods in question are subsequently found not to infringe an intellectual property right. [Am. 8]

(22c)  Member States should take appropriate measures with a view to ensuring the smooth transit of generic medicines. Therefore, a proprietor of a trade mark should not have the right to prevent any third party from bringing goods, in the context of commercial activity, into the customs territory of the Member State based upon similarities, perceived or actual, between the international non-proprietary name (INN) for the active ingredient in the medicines and a registered trademark. [Am. 9]

(23)  In order to more effectively prevent the entry of infringing counterfeit goods, particularly in the context of sales over the Internet, internet delivered in small consignments as defined by Regulation (EU) No 608/2013 the proprietor of a validly registered trade mark should be entitled to prohibit the importing of such goods into the Union where it is only the consignor of the counterfeit goods who acts for commercial purposes in the course of trade . In cases where such measures are taken, the individuals or entities that had ordered the goods are informed of the reason for the measures as well as of their legal rights vis-a-vis the consignor. [Am. 10]

(24)  In order to enable proprietors of registered trade marks to fight counterfeiting more effectively, they should be entitled to prohibit the affixing of an infringing trade mark to goods and certain preparatory acts prior to the affixing.

(25)  The exclusive rights conferred by a trade mark should not entitle the proprietor to prohibit the use of signs or indications which are used fairly and in accordance with honest practices in industrial and commercial matters. In order to create equal conditions for trade names and trade marks against the background that trade names are regularly granted unrestricted protection against later trade marks, such use should be considered to include the use of one’s own personal name. It should further include the use of descriptive or non-distinctive signs or indications in general. Furthermore, the proprietor should not be entitled to prevent the general fair and honest use of the mark for identifying or referring to the goods or services as those of the proprietor.

(26)  It follows from the principle of free movement of goods that the proprietor of a trade mark must not be entitled to prohibit its use by a third party in relation to goods which have been put into circulation in the Union, under the trade mark, by him or with his consent, unless the proprietor has legitimate reasons to oppose further commercialisation of the goods.

(27)  It is important, for reasons of legal certainty and without inequitably prejudicing the interests of a proprietor of an earlier trade mark, to provide that the latter may no longer request a declaration of invalidity nor may he oppose the use of a trade mark subsequent to his own of which he has knowingly tolerated the use for a substantial length of time, unless the application for the subsequent trade mark was made in bad faith.

(28)  In order to ensure legal certainty and safeguard trade mark rights legitimately acquired, it is appropriate and necessary to lay down, without affecting the principle that the later trade mark cannot be enforced against the earlier trade mark, that proprietors of earlier trade marks should not be entitled to obtain refusal or invalidation or to oppose the use of a later trade mark when the later trade mark was acquired at a time when the earlier trade mark was liable to be declared invalid or revoked, for example because it had not yet acquired distinctiveness through use, or when the earlier trade mark could not be enforced against the later trade mark because the necessary conditions were not applicable, for example when the earlier mark had not yet obtained reputation.

(29)  Trade marks fulfil their purpose of distinguishing goods or services and allowing consumers to make informed choices only when they are actually used on the market. A requirement of use is also necessary in order to reduce the total number of trade marks registered and protected in the Union and, consequently, the number of conflicts which arise between them. It is therefore essential to require that registered trade marks must actually be used in connection with the goods or services for which they are registered, or, if not used within five years of the date of registration , must be liable to be revoked. [Am. 11]

(30)  Consequently a registered trade mark should only be protected in so far as it is actually used and an earlier registered trade mark should not enable its proprietor to oppose or invalidate a later trade mark if that proprietor has not put its trade mark to genuine use. Furthermore, Member States should provide that a trade mark may not be successfully invoked in infringement proceedings if it is established as a result of a plea that the trade mark could be revoked or, when the action is brought against a later right, could have been revoked at the time when the later right was acquired.

(31)  It is appropriate to provide that, where the seniority of a national mark has been claimed for a European Union trade mark and the national mark has thereafter been surrendered or allowed to lapse, the validity of that national mark may still be challenged. The challenge should be limited to situations where the national mark could have been declared invalid or revoked at the time the mark was removed from the register.

(32)  For reasons of coherence and in order to facilitate the commercial exploitation of trade marks in the Union, the rules applicable to trade marks as objects of property should be aligned with those already in place for European Union trade marks, and should include rules on assignment and transfer, licensing, rights in rem, levy of execution and insolvency proceedings.

(33)  Collective trade marks have proven a useful instrument for promoting goods or services with specific common properties. It is therefore appropriate to subject national collective trade marks to rules similar to the rules applicable to European collective marks.

(34)  In order to improve and facilitate access to trade mark protection and to increase legal certainty and predictability, the procedure for the registration of trade marks in the Member States should be efficient and transparent and should follow rules similar to those applicable to European Union trade marks. With a view to achieving a consistent and balanced trade mark system both at national and Union level, all the central industrial property offices of the Member States should therefore limit their examination ex officio of whether a trade mark application is eligible for registration to the absence of absolute grounds for refusal only. This should however not prejudice the right of those offices to provide, upon request of applicants, searches for earlier rights on a purely informative basis and without any prejudice to or binding effect on the further registration process, including subsequent opposition proceedings. Member States should be free to decide whether to conduct an ex officio examination for refusal on relative grounds. [Am. 12]

(35)  In order to ensure legal certainty with regard to the scope of trade mark rights and to facilitate access to trade mark protection, the designation and classification of goods and services covered by a trade mark application should follow the same rules in all Member States and should be aligned on those applicable to European Union trade marks. In order to enable the competent authorities and economic operators to determine the extent of the trade mark protection sought on the basis of the application alone, the designation of goods and services should be sufficiently clear and precise. The use of general terms should be interpreted as including only goods and services clearly covered by the literal meaning of the term.

(36)  For the purpose of ensuring effective trade mark protection, Member States should make available an efficient administrative opposition procedure, allowing proprietors of earlier trade mark rights to oppose the registration of a trade mark application. Furthermore, in order to offer efficient means of revoking or declaring invalid trade marks, Member States should provide for an administrative procedure for revocation or declaration of invalidity similar to that applicable to European Union trade marks at Union level.

(37)  Member States' central industrial property offices should cooperate with each other and with the European Union Trade Marks and Designs Intellectual Property Agency (‘the Agency’) in all fields of trade mark registration and administration in order to promote convergence of practices and tools, such as the creation and updating of common or connected databases and portals for consultation and search purposes. The offices of the Member States and the Agency should further cooperate in all other areas of their activities which are relevant for the protection of trade marks in the Union.

(38)  This Directive should not exclude the application to trade marks of provisions of law of the Member States other than trade mark law, such as the provisions relating to unfair competition, civil liability or consumer protection.

(39)  All Member States are bound by the Paris Convention for the Protection of Industrial Property (Paris Convention) and the TRIPS Agreement. It is necessary that the provisions of this Directive should be entirely consistent with those of the said Convention and Agreement. The obligations of the Member States resulting from that Convention and Agreement should not be affected by this Directive. Where appropriate, the second paragraph of Article 351 of the Treaty should apply.

(40)  The obligation to transpose this Directive into national law should be confined to those provisions which represent a substantive amendment as compared with the earlier Directive. The obligation to transpose the provisions which are unchanged arises under the earlier Directive.

(41)  This Directive should be without prejudice to the obligations of the Member States relating to the time limit for transposition into national law of the Directive set out in Part B of Annex I to Directive 2008/95/EC.

(41a)  The European Data Protection Supervisor was consulted in accordance with Article 28(2) of Regulation (EC) No 45/2001 of the European Parliament and of the Council(11) and delivered an opinion on 11 July 2013 (12) , [Am. 13]

HAVE ADOPTED THIS DIRECTIVE:

Article 1

Scope

This Directive shall apply to every trade mark in respect of goods or services which is the subject of registration or of an application in a Member State for registration in a Member State as an individual trade mark, a collective mark or a guarantee or certification mark, or which is the subject of a registration or an application for registration in the Benelux Office for Intellectual Property or of an international registration having effect in a Member State. [Am. not concerning all languages]

Article 2

Definitions

For the purpose of this Directive, the following definitions shall apply:

(a)  ‘office’ means the central industrial property office of the Member State or the Benelux Office for Intellectual Property entrusted with the registration of trade marks;

(b)  ‘Agency’ means the European Union Trade Marks and Designs Intellectual Property Agency established in accordance with Article 2 of Regulation (EC) No 207/2009; [Am. 15. This amendment applies throughout the text]

(c)  ‘register’ means the register of trade marks kept by an office;

(ca)  ‘earlier trade marks’ means:

(i)  trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

—  European Union trade marks;

—  trade marks registered in the Member State or, in the case of Belgium, Luxembourg or the Netherlands, at the Benelux Office for Intellectual Property;

—  trade marks registered under international arrangements which have effect in the Member State;

(ii)  European Union trade marks which validly claim seniority, in accordance with Regulation (EC) No 207/2009, to a trade mark referred to in the second and third indents of point (i), even when the latter trade mark has been surrendered or allowed to lapse;

(iii)  applications for the trade marks referred to in points (i) and (ii), subject to their registration;

(iv)  trade marks which, on the date of application for registration of the trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6 bis of the Paris Convention; [Am. 16]

(cb)  ‘guarantee or certification mark’ means a trade mark which is described as such when the mark is applied for and which is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of geographical origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from those goods and services which are not; [Am. 17]

(cc)  ‘collective mark’ means a trade mark which is described as such when the mark is applied for and which is capable of distinguishing the goods or services of the members of an association which is the proprietor of the mark from the goods or services of other undertakings. [Am. 18]

Article 3

Signs of which a trade mark may consist

A trade mark may consist of any signs, in particular words, including personal names, designs, letters, numerals, colours as such, the shape of goods or of their packaging, or sounds, provided that generally available technology is used and such signs are capable of:

(a)  distinguishing the goods or services of one undertaking from those of other undertakings; and

(b)  being represented in the register in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor. [Am. 19]

Article 4

Absolute grounds for refusal or invalidity

1.  The following shall not be registered or, if registered, shall be liable to be declared invalid:

(a)  signs which cannot constitute a trade mark;

(b)  trade marks which are devoid of any distinctive character;

(c)  trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;

(d)  trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

(e)  signs which consist exclusively of:

(i)  the shape which results from the nature of the goods themselves;

(ii)  the shape of goods which is necessary to obtain a technical result;

(iii)  the shape which gives substantial value to the goods;

(f)  trade marks which are contrary to public policy or to accepted principles of morality;

(g)  trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;

(h)  trade marks which have not been authorised by the competent authorities and are to be refused or invalidated pursuant to Article 6 ter of the Paris Convention for the Protection of Industrial Property, hereinafter referred to as the ‘Paris Convention’;

(i)  trade marks which are excluded from registration and shall not continue to be used pursuant to Union legislation or international agreements to which the Union is party, providing for protection of designations of origin and geographical indications;

(j)  trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of spirit drinks, traditional terms for wine and traditional specialities guaranteed; [Am. 20]

(ja)  trade marks which contain or consist of an earlier variety denomination registered in accordance with Council Regulation (EC) No 2100/94 (13) with respect to the same type of product. [Am. 21]

2.  Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain:

(a)  in other Member States than those where the application for registration was filed;

(b)  only where a trade mark in a foreign language is translated or transcribed in any script or official language of the Member States. [Am. 22]

3.  A trade mark shall be liable to be declared invalid where the application for registration of the trade mark was made in bad faith by the applicant. Any Member State may also provide that such a trade mark shall not be registered.

4.  Any Member State may provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where and to the extent that:

(a)  the use of that trade mark may be prohibited pursuant to provisions of law other than trade mark law of the Member State concerned or of the Union;

(b)  the trade mark covers a sign of high symbolic value, in particular a religious symbol;

(c)  the trade mark includes badges, emblems and escutcheons other than those covered by Article 6 ter of the Paris Convention and which are of public interest, unless the consent of the competent authority to their registration has been given in conformity with the legislation of the Member State.

5.  A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration or after the date of registration, and following the use which has been made of it, it has acquired a distinctive character. A trade mark shall not be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for invalidity, and following the use which has been made of it, it has acquired a distinctive character. [Am. 23]

6.  Any Member State may provide that paragraph 5 shall also apply where the distinctive character was acquired after the date of application for registration and before the date of registration.

Article 5

Relative grounds for refusal or invalidity

1.  A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:

(a)  if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected;

(b)  if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

2.  ‘Earlier trade marks’ within the meaning of paragraph 1 means:

(a)  trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks;

(i)  European trade marks;

(ii)  trade marks registered in the Member State or, in the case of Belgium, Luxembourg or the Netherlands, at the Benelux Office for Intellectual Property;

(iii)  trade marks registered under international arrangements which have effect in the Member State;

(b)  European trade marks which validly claim seniority, in accordance with Regulation (EC) No 207/2009, from a trade mark referred to in points (a)(ii) and (iii), even when the latter trade mark has been surrendered or allowed to lapse;

(c)  applications for the trade marks referred to in points (a) and (b), subject to their registration;

(d)  trade marks which, on the date of application for registration of the trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6 bis of the Paris Convention. [Am. 24]

3.  A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:

(a)  if it is identical with, or similar to, an earlier trade mark irrespective of whether the goods or services for which it is applied or registered are identical with, similar to or not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in a the Member State in respect of which registration is applied for or in which the trade mark is registered or, in the case of a European Union trade mark, has a reputation in the Union and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark; [Am. 25]

(b)  where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s authorisation, unless the agent or representative justifies his action;

(c)  where the trade mark is liable to be confused with an earlier mark protected outside the Union, provided that the mark was still in genuine use at the date of the application and the applicant was acting in bad faith.

(d)  if it is excluded from registration and shall not continue to be used pursuant to Union legislation providing for protection of designations of origin and geographical indications. [Am. 26]

4.  Any Member State may provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:

(a)  rights to a non-registered trade mark or to another sign used in the course of trade were acquired prior to the date of application for registration of the subsequent trade mark, or the date of the priority claimed for the application for registration of the subsequent trade mark, and that non-registered trade mark or other sign confers on its proprietor the right to prohibit the use of a subsequent trade mark;

(b)  the use of the trade mark may be prohibited by virtue of an earlier right other than the rights referred to in paragraph 2 and point (a) of this paragraph and in particular:

(i)  a right to a name;

(ii)  a right of personal portrayal;

(iii)  a copyright;

(iv)  an industrial property right.

5.  The Member States may shall permit that in appropriate circumstances registration need not be refused or the trade mark need not be declared invalid where the proprietor of the earlier trade mark or other earlier right consents to the registration of the later trade mark. [Am. 27]

6.  Any Member State may provide that, by derogation from paragraphs 1 to 5, the grounds for refusal of registration or invalidity in force in that State prior to the date of the entry into force of the provisions necessary to comply with Directive 89/104/EEC, shall apply to trade marks for which application has been made prior to that date.

Article 6

Establishment a posteriori of invalidity or revocation of a trade mark

Where the seniority of a national trade mark which has been surrendered or allowed to lapse is claimed for a European Union trade mark, the invalidity or revocation of the national trade mark may be established a posteriori , provided that the invalidity or revocation could also have been declared at the time the mark was surrendered or allowed to lapse. In such a case the seniority shall cease to produce its effects.

Article 7

 Grounds for refusal or invalidity relating to only some of the goods or services 

Where grounds for refusal of registration or for invalidity of a trade mark exist in respect of only some of the goods or services for which that trade mark has been applied or registered, refusal of registration or invalidity shall cover those goods or services only. 

Article 8

Lack of distinctive character or of reputation of an earlier trade mark precluding a declaration of invalidity of a registered trade mark

A registered trade mark shall not be declared invalid on the basis of an earlier trade mark in any of the following cases:

(a)  where the earlier trade mark, liable to be declared invalid pursuant to Article 4(1)(b), (c) or (d), had not acquired a distinctive character in accordance with Article 4(5) at the filing date or the priority date of the registered trade mark;

(b)  where the application for a declaration of invalidity is based on Article 5(1)(b) and the earlier trade mark had not become sufficiently distinctive to support a finding of likelihood of confusion within the meaning of Article 5(1)(b) at the filing date or the priority date of the registered trade mark;

(c)  where the application for a declaration of invalidity is based on point (a) of Article 5(3) and the earlier trade mark did not have a reputation within the meaning of point (a) of Article 5(3) at the filing date or the priority date of the registered trade mark. [Am. 28]

Article 9

Preclusion of a declaration of invalidity in consequence of acquiescence

1.  Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 5(2) and point (a) of Article 5(3) has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith. [Am. 29]

2.  Any Member State may provide that paragraph 1 shall apply to the proprietor of any other earlier right referred to in Article 5(4)(a) or (b).

3.  In the cases referred to in paragraphs 1 and 2, the proprietor of a later registered trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be invoked against the later trade mark.

Article 10

Rights conferred by a trade mark

1.  The registration of a trade mark shall confer on the proprietor exclusive rights.

2.  Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the registered trade mark, the proprietor of a registered trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign in relation to goods or services where :

(a)  the sign is identical with the trade mark and is used in relation to goods or services which are identical with those for which the trade mark is registered and where such use affects or is liable to affect the function of the trade mark to guarantee to consumers the origin of the goods or services ;

(b)  without prejudice to point (a), the sign is identical, or similar to, the trade mark and is used for goods or services which are identical with or similar to the goods or services for which the trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;

(c)  the sign is identical with, or similar to, the trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar or not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

3.  The following, in particular, may be prohibited under paragraph 2:

(a)  affixing the sign to the goods or to the packaging thereof;

(b)  offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;

(c)  importing or exporting the goods under the sign;

(d)  using the sign as a trade or company name or part of a trade or company name;

(e)  using the sign on business papers and in advertising;

(f)  using the sign in comparative advertising in a way which is contrary to Directive 2006/114/EC.

4.  The proprietor of a registered trade mark shall also be entitled to prevent the importing into the Union of goods pursuant to paragraph 3(c) delivered in small consignments as defined by Regulation (EU) No 608/2013 where only the consignor of the goods acts for commercial purposes in the course of trade and where such goods, including packaging, bear without authorisation a trade mark which is identical to the trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark . In cases where such measures are taken, Member States shall ensure that the individual or entity that ordered the goods is informed of the reason for the measures as well as of their legal rights vis-à-vis the consignor.

5.  Without prejudice to WTO rules, in particular Article V of the GATT on freedom of transit, the proprietor of a registered trade mark shall also be entitled to prevent all third parties from bringing goods, in the context of commercial activity, into the customs territory of the Member State where the trade mark is registered without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorization a trade mark which is identical to the trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark. [Ams 30 and 56]

6.  Where, under the law of a Member State, the use of a sign under the conditions referred to in paragraph 2, point (b) or (c) could not be prohibited before the date of entry into force of the provisions necessary to comply with First Council Directive 89/104/EEC(14) in the Member State concerned, the rights conferred by the trade mark may not be relied on to prevent the continued use of the sign.

7.  Paragraphs 1, 2, 3 and 6 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

Article 11

Infringement of the rights of the proprietor by use of get-up, packaging or other means

Where it is likely that the get-up, packaging or other means to which the mark is affixed will be used in relation to goods or services and the use in relation to those goods or services would constitute an infringement of the rights of the proprietor under Article 10(2) and (3), the proprietor shall have the right to prohibit the following:

(a)  affixing in the course of trade a sign that is, as specified in Article 5(1) of this Directive, identical with or similar to the trade mark on get-up, packaging or, labels, tags, security features, authenticity devices or any other means on which the mark may be affixed; [Am. 31]

(b)  offering or placing on the market, or stocking for those purposes, or importing or exporting get-up, packaging or, labels, tags, security features, authenticity devices or any other means on which the mark is affixed. [Am. 32]

Article 12

Reproduction of trade marks in dictionaries

If the reproduction of a trade mark in a dictionary, encyclopaedia or similar reference work gives the impression that it constitutes the generic name of the goods or services for which the trade mark is registered, the publisher of the work shall, at the request of the proprietor of the trade mark, ensure that the reproduction of the trade mark at the latest in the next edition of the publication is accompanied by an indication that it is a registered trade mark.

Article 13

Prohibition of the use of a trade mark registered in the name of an agent or representative

1.  Where a trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor's consent, the latter shall be entitled to either of the following:

(a)  to oppose the use of his mark by his agent or representative;

(b)  to demand from the agent or representative the assignment of the trade mark in his favour.

2.  Paragraph 1 shall not apply where the agent or representative justifies his action.

Article 14

Limitation of the effects of a trade mark

1.  The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:

(a)  his own personal name or address;

(b)  signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services;

(c)  the trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of the trade mark, in particular where the use of the trade mark:

(i)  is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts;

(ii)  is made in comparative advertising satisfying all conditions set forth in Directive 2006/114/EC;

(iii)  is made to bring to the attention of consumers the resale of genuine goods that have originally been sold by or with the consent of the proprietor of the trade mark;

(iv)  is made to put forward a legitimate alternative to the goods or services of the proprietor of the trade mark;

(v)  is made for the purposes of parody, artistic expression, criticism or comment.

The first subparagraph This paragraph shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters. [Am. 33]

2.  The use by the third party shall be considered not to be in accordance with honest practices, in particular in the following cases:

(a)  it gives the impression that there is a commercial connection between the third party and the proprietor of the trade mark;

(b)  it takes unfair advantage of or is detrimental to, the distinctive character or the repute of the trade mark without due cause. [Am. 34]

2a.  The trade mark shall not entitle the proprietor to prohibit a third party from using the trade mark for a due cause for any non-commercial use of a mark. [Am. 35]

3.  The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular locality if that right is recognised by the laws of the Member State in question and within the limits of the territory in which it is recognised.

Article 15

Exhaustion of the rights conferred by a trade mark

1.  The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Union under that trade mark by the proprietor or with his consent.

2.  Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

Article 16

Use of trade marks

1.  If, within a period of five years following the date of registration, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the limits and sanctions provided for in Article 17, Article 19(1), Article 46(1), and Article 48(3) and (4), unless there are proper reasons for non-use.

2.  Where a Member State provides for opposition proceedings following registration, the five years referred to in paragraph 1 shall be calculated from the date when the mark can no longer be opposed or, in case an opposition has been lodged and not withdrawn, from the date when a decision terminating the opposition proceedings has become final.

3.  With regard to trade marks registered under international arrangements which have effect in the Member State, the five years referred to in paragraph 1 shall be calculated from the date when the mark can no longer be rejected or opposed. Where an opposition has been lodged and not withdrawn, the period shall be calculated from the date when a decision terminating the opposition proceedings has become final.

3a.  The date of commencement of the period of five years referred to in paragraphs 1, 2 and 3 shall be entered in the register. [Am. 36]

4.  The following shall also constitute use within the meaning of paragraph 1:

(a)  use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor;

(b)  affixing of the trade mark to goods or to the packaging thereof in the Member State concerned solely for export purposes.

5.  Use of the trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor.

Article 17

Non-use as defence in infringement proceedings

The proprietor of a trade mark shall be entitled to prohibit the use of a sign only to the extent that his rights are not liable to be revoked pursuant to Article 19 at the time the infringement action is brought.

Article 18

Intervening right of the proprietor of a later registered trade mark as defence in infringement proceedings

1.  In infringement proceedings, the proprietor of a trade mark shall not be entitled to prohibit the use of a later registered mark where that later trade mark shall not be declared invalid pursuant to Articles 8, 9(1) and (2) and 48(3).

2.  In infringement proceedings, the proprietor of a trade mark shall not be entitled to prohibit the use of a later registered European Union trade mark where that later trade mark shall not be declared invalid pursuant to Article 53(3) and (4), Article 54(1) and (2) or Article 57(2) of Regulation (EC) No 207/2009.

3.  Where the proprietor of a trade mark shall not be entitled to prohibit the use of a later registered mark pursuant to paragraphs 1 or 2, the proprietor of that later registered trade mark shall not be entitled to prohibit the use of the earlier trade mark in infringement proceedings, even though that right may no longer be invoked against the later trade mark.

Article 19

Absence of genuine use as ground for revocation

1.  A trade mark shall be liable to revocation if, within a continuous period of five years, it has not been put to genuine use in the Member State in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

2.  No person may claim that the proprietor’s rights in a trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application for revocation, genuine use of the trade mark has been started or resumed.

3.  The commencement or resumption of use within a period of three months preceding the filing of the application for revocation which began at the earliest on expiry of the continuous period of five years of non-use shall be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application for revocation may be filed.

Article 20

 Development into a common name or misleading indication as grounds for revocation 

A trade mark shall be liable to revocation if, after the date on which it was registered:

(a)  in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered;

(b)  in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

Article 21

Revocation relating to only some of the goods or services

Where grounds for revocation of a trade mark exist in respect of only some of the goods or services for which that trade mark has been registered, revocation shall cover those goods or services only.

Article 22

Transfer of registered trade marks

1.  A trade mark may be transferred, separately from any transfer of the undertaking, in respect of some or all of the goods or services for which it is registered.

2.  A transfer of the whole of the undertaking shall include the transfer of the trade mark except where there is agreement to the contrary or circumstances clearly dictate otherwise. This provision shall apply to the contractual obligation to transfer the undertaking.

3.  Without prejudice to paragraph 2, an assignment of the trade mark shall be made in writing and shall require the signature of the parties to the contract, except when it is a result of a judgment; otherwise it shall be void. [Am. 37]

4.  On request of one of the parties a transfer shall be entered in the register and published, if the requesting party has provided to the office documentary evidence of the transfer . [Am. 38]

5.  As long as the application for registration of the transfer has not been entered in the register received by the office , the successor in title may not invoke the rights arising from the registration of the trade mark against third parties. [Am. 39]

6.  Where there are time limits to be observed vis-à-vis the office, the successor in title may make the corresponding statements to the office once the request for registration of the transfer has been received by the office.

Article 23

Rights in rem

1.  A trade mark may, independently of the undertaking, be given as security or be the subject of rights in rem.

2.  On request of one of the parties, the rights referred to in paragraph 1 shall be entered in the register and published.

Article 24

Levy of execution

1.  A trade mark may be levied in execution.

2.  On request of one of the parties, levy of execution shall be entered in the register and published.

Article 25

Insolvency proceedings

Where a trade mark is involved in insolvency proceedings, on request of the competent authority an entry to this effect shall be made in the register and published.

Article 26

Licensing

1.  A trade mark may be licensed for some or all of the goods or services for which it is registered and for the whole or part of the Member State concerned. A licence may be exclusive or non-exclusive.

2.  The proprietor of a trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in his licensing contract with regard to:

(a)  its duration;

(b)  the form covered by the registration in which the trade mark may be used;

(c)  the scope of the goods or services for which the licence is granted;

(d)  the territory in which the trade mark may be affixed; or

(e)  the quality of the goods manufactured or of the services provided by the licensee.

3.  Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a trade mark only if its proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor of the trade mark, after formal notice, does not himself bring infringement proceedings within an appropriate period.

4.  A licensee shall, for the purpose of obtaining compensation for damage suffered by him, be entitled to intervene in infringement proceedings brought by the proprietor of the trade mark.

5.  On request of one of the parties the grant or transfer of a licence in respect of a trade mark shall be entered in the register and published.

Article 27

The application for a trade mark as an object of property

Articles 22 to 26 shall apply to applications for trade marks.

Article 28

Definitions

For the purposes of this section, the following shall apply:

(1)  ‘Guarantee or certification mark’ means a trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of geographical origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods and services which are not so certified;

(2)  ‘Collective mark’ means a trade mark which is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of an association which is the proprietor of the mark from the goods or services of other undertakings. [Am. 40]

Article 29

Guarantee marks and certification marks

1.  Member States may provide for the registration of guarantee or certification marks. 

2.  Member States may provide that guarantee or certification marks shall not be registered, or shall be revoked or declared invalid, on grounds other than those specified in Articles 3,19 and 20 where the function of those marks so requires.

3.  A guarantee or certification mark consisting of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters. In particular, such a mark may not be invoked against a third party who is entitled to use a geographical name.

Article 30

 Collective marks 

1.  Member States shall provide for the registration of collective marks.

2.  Associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued, as well as legal persons governed by public law, may apply for collective marks.

3.  By way of derogation from Article 4(1)(c), signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute collective marks.

A collective mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters. In particular, such a mark may not be invoked against a third party who is entitled to use a geographical name. 

Article 31

Regulations governing use of the collective mark

1.  An applicant for a collective mark shall submit the regulations governing its use to the office . [Am. 41]

2.  The regulations governing use shall specify the persons authorised to use the mark, the conditions of membership of the association and the conditions of use of the mark, including sanctions. The regulations governing use of a mark referred to in Article 30(3) shall authorise any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark.

Article 32

Refusal of the application

1.  In addition to the grounds for refusal of a trade mark application provided for in Articles 4 and 5, an application for a collective mark shall be refused where the provisions of Articles 28(2), 30 or 31 are not satisfied, or where the regulations governing use are contrary to public policy or to accepted principles of morality.

2.  An application for a collective mark shall also be refused if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a collective mark.

3.  An application shall not be refused if the applicant, as a result of amendment of the regulations governing use, meets the requirements of paragraphs 1 and 2.

Article 33

Use of collective marks

The requirements of Article 16 shall be satisfied where genuine use of a collective mark in accordance with Article 16 is made by any person who has authority to use it.

Article 34

Amendment to the regulations governing use of the collective mark

1.  The proprietor of a collective mark shall submit to the office any amended regulations governing use.

2.  The amendment shall be mentioned in the register unless the amended regulations do not satisfy the requirements of Article 31 or involve one of the grounds for refusal referred to in Article 32.

3.  Article 42(2) shall apply to amended regulations governing use.

4.  For the purposes of this Directive, amendments to the regulations governing use shall take effect only from the date of entry of the mention of the amendment in the register.

Article 35

Persons who are entitled to bring an action for infringement

1.  Article 26(3) and (4) shall apply to every person who has authority to use a collective mark.

2.  The proprietor of a collective mark shall be entitled to claim compensation on behalf of persons who have authority to use the mark where those persons have sustained damage in consequence of unauthorised use of the mark.

Article 36

Additional grounds for revocation

In addition to the grounds for revocation provided for in Articles 19 and 20, the rights of the proprietor of a collective mark shall be revoked on application to the office or on the basis of a counterclaim in infringement proceedings on the following grounds:

(a)  the proprietor does not take reasonable steps to prevent the mark being used in a manner incompatible with the conditions of use laid down in the regulations governing use, amendments to which have, where appropriate, been mentioned in the register;

(b)  the manner in which the mark has been used by authorised persons has caused it to become liable to mislead the public in the manner referred to in Article 32(2);

(c)  an amendment to the regulations governing use of the mark has been mentioned in the register in breach of Article 34(2), unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of that Article.

Article 37

Additional grounds for invalidity

In addition to the grounds for invalidity provided for in Articles 4 and 5, a collective mark which is registered in breach of the provisions of Article 32 shall be declared invalid unless the proprietor of the mark, by amending the regulations governing use, complies with the requirements of Article 32.

Article 38

Conditions with which applications must comply

1.  An application for registration of a trade mark shall contain at least[Am. 42]

(a)  a request for the registration,

(b)  information identifying the applicant,

(c)  a list of the goods or services in respect of which the registration is requested,

(d)  a representation of the trade mark.

2.  The application for a trade mark shall be subject to the payment of an application fee and, where appropriate, one or more class fees.

Article 39

Date of filing

1.  The date of filing of a trade mark application shall be the date on which the documents containing the information specified in Article 38 are filed with the office by the applicant.

2.  Member States may, in addition, provide that the accordance of the date of filing shall be subject to the payment of the basic application or registration fee.

Article 40

Designation and classification of goods and services

1.  The goods and services in respect of which registration is applied for shall be classified in conformity with the system of classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 (hereinafter referred to as the ‘Nice Classification’).

2.  The goods and services for which the protection is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought. The list of goods and services shall allow each item to be classified in only one class of the Nice Classification.

3.  For the purposes of paragraph 2, the general indications included in the class headings of the Nice Classification or other general terms may be used, provided that they comply with the requisite standards of clarity and precision.

4.  The office shall reject the application in respect of terms which are unclear or imprecise if the applicant does not suggest an acceptable wording within a period set by the office to that effect. In the interest of clarity and legal certainty, the offices in cooperation with each other shall compile a list reflecting their respective administrative practices with regard to the classification of goods and services.

5.  The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services which cannot be so understood.

6.  Where the applicant requests registration for more than one class, the goods and services shall be grouped applicant shall group the goods and services according to the classes of the Nice classification, each group being preceded by the number of the class to which that group of goods or services belongs, and presented shall present them in the order of the classes. [Am. 43]

7.  The classification of goods and services shall serve exclusively administrative purposes. Goods and services shall not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification, and goods and services shall not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.

Article 41

Ex officio examination

The offices shall limit their examination ex officio of whether a trade mark application is eligible for registration to the absence of the absolute grounds for refusal provided for in Article 4. [Am. 44]

Article 42

Observations by third parties

1.  Prior to registration of a trade mark, any natural or legal person and any group or body representing manufacturers, producers, suppliers of services, traders or consumers may submit to the office written observations, explaining on which of the grounds listed in Article 4 the trade mark shall not be registered ex officio. They shall not be parties to the proceedings before the office.

2.  In addition to the grounds referred to in paragraph 1, any natural or legal person and any group or body representing manufacturers, producers, suppliers of services, traders or consumers may submit to the office written observations based on the particular grounds on which the application for a collective mark should be refused under Article 32(1) and (2).

2a.  Member States which have established opposition procedures based on absolute grounds provided for by Article 4 shall not be required to implement this Article. [Am. 45]

Article 43

Division of applications and registrations

The applicant or proprietor may divide a trade mark application or registration into one or more separate applications or registrations by submitting a declaration to the office.

Article 44

Fees

The registration and renewal of a trade mark shall be subject to an additional fee for each class of goods and services beyond the first class.

Article 45

Opposition procedure

1.  Member States shall provide for an efficient and expeditious administrative procedure before their offices for opposing the registration of a trade mark application on the grounds provided for in Article 5.

2.  The administrative procedure referred to in paragraph 1 shall provide that at least the proprietor of an earlier right referred to in Article 4(1)(i) , Article 5(2) and point (a) of Article 5 (3) shall be able to file a notice of opposition. A notice of opposition may be filed on the basis of one or more earlier rights, provided that they all belong to the same proprietor, and on the basis of a part or of the totality of the goods or services in respect of which the earlier right is registered or applied for, and may be directed against a part or the totality of the goods or services in respect of which the contested mark is applied for. [Am. 46]

3.  The parties shall, at their joint request, be granted a period of time of at least a minimum of two months before within the opposition proceedings commence in order to negotiate the possibility of an amicable settlement between the opposing party and the applicant. [Am. 47]

Article 46

Non-use as defence in opposition proceedings

1.  In administrative opposition proceedings, where at the filing date or date of priority of the later trade mark, the period of five years within which the earlier trade mark must have been put to genuine use as provided for in Article 16 had expired, upon request of the applicant the proprietor of the earlier trade mark who has given notice of opposition shall furnish proof that the earlier trade mark has been put to genuine use as provided for in Article 16 during the period of five years preceding the filing date or date of priority of the later trade mark, or that proper reasons for non-use existed. In the absence of proof to this effect the opposition shall be rejected.

2.  If the earlier trade mark has been used in relation to only part of the goods or services for which it is registered, it shall, for the purpose of the examination of the opposition as provided for in paragraph 1, be deemed to be registered in respect only of that part of the goods or services.

3.  Paragraphs 1 and 2 shall apply where the earlier trade mark is a European Union trade mark. In such a case, the genuine use of the European Union trade mark shall be determined in accordance with Article 15 of Regulation (EC) No 207/2009.

Article 47

Procedure for revocation or declaration of invalidity

1.  Member States shall provide for an efficient and expeditious administrative procedure before their offices for revocation or declaration of invalidity of a trade mark. [Am. 48]

2.  The administrative procedure for revocation shall provide that the trade mark shall be revoked on the grounds provided for in Articles 19 and 20.

3.  The administrative procedure for invalidity shall provide that the trade mark shall be declared invalid at least on the following grounds:

(a)  the trade mark should not have been registered because it does not comply with the requirements provided for in Article 4;

(b)  the trade mark should not have been registered because of the existence of an earlier right within the meaning of Article 5(2) and (3).

4.  The administrative procedure shall provide that at least the following shall be able to file an application for revocation or for a declaration of invalidity:

(a)  in the case of paragraph 2 and of point (a) of paragraph 3, any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which under the terms of the law governing it has the capacity to sue in its own name and to be sued;

(b)  in the case of point (b) of paragraph 3, the proprietor of an earlier right referred to in Article 5(2) and (3).

4a.  An application for revocation or for a declaration of invalidity may be directed against a part or the totality of the goods or services in respect of which the contested mark is registered. [Am. 49]

4b.  An application for a declaration of invalidity may be filed on the basis of one or more earlier rights, provided they all belong to the same proprietor. [Am. 50]

Article 48

Non-use as defence in proceedings seeking a declaration of invalidity

1.  In administrative proceedings for a declaration of invalidity based on a registered trade mark with an earlier filing date or priority date, if the proprietor of the later trade mark so requests, the proprietor of the earlier trade mark shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use as provided for in Article 16 in connection with the goods or services in respect of which it is registered and which he cites as justification for his application, or that there are proper reasons for non-use, provided that the period of five years within which the earlier trade mark must have been put to genuine use has expired at the date of the application for a declaration of invalidity. [Am. 51]

2.  Where, at the filing date or date of priority of the later trade mark, the period of five years within which the earlier trade mark must have been put to genuine use as provided for in Article 16 had expired, the proprietor of the earlier trade mark shall, in addition to the proof required in paragraph 1, furnish proof that the trade mark has been put to genuine use during the period of five years preceding the filing date or date of priority, or that proper reasons for non-use existed.

3.  In the absence of the proofs referred to in paragraphs 1 and 2, the application for a declaration of invalidity on the basis of an earlier trade mark shall be rejected.

4.  If the earlier trade mark has been used in accordance with Article 16 in relation to only part of the goods or services for which it is registered, it shall, for the purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect only of that part of the goods or services.

5.  Paragraphs 1 to 4 shall apply where the earlier trade mark is a European Union trade mark. In such a case, genuine use of the European Union trade mark shall be determined in accordance with Article 15 of Regulation (EC) No 207/2009.

Article 49

Consequences of revocation and invalidity

1.  A registered trade mark shall be deemed not to have had, as from the date of the application for revocation, the effects specified in this Directive, to the extent that the rights of the proprietor have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be fixed in the decision at the request of one of the parties.

2.  A registered trade mark shall be deemed not to have had, as from the outset, the effects specified in this Directive, to the extent that the trade mark has been declared invalid.

Article 50

Duration of registration

1.  Trade marks shall be registered for a period of 10 years from the date of filing of the application.

2.  Registration may be renewed in accordance with Article 51 for further periods of 10 years.

Article 51

Renewal

1.  Registration of a trade mark shall be renewed at the request of the proprietor of the trade mark or any person authorised by him, provided that the renewal fees have been paid.

2.  The office shall inform the proprietor of the trade mark, and any person having a registered right in respect of the trade mark, of the expiry of the registration in good time before the said expiry. Failure to give such information shall not involve the responsibility of the office.

3.  The request for renewal shall be submitted and the renewal fees shall be paid within a period of six months ending on the last day of the month in which protection ends. Failing this, the request may be submitted within a further period of six months following the day referred to in the first sentence. The renewal fees and an additional fee shall be paid within that further period.

4.  Where the request is submitted or the fees paid in respect of only some of the goods or services for which the trade mark is registered, registration shall be renewed for those goods or services only.

5.  Renewal shall take effect from the day following the date on which the existing registration expires. The renewal shall be registered and published.

Article 51a

Communication with the office

Parties to the proceedings or, where appointed, their representatives, shall designate an official address within one of the Member States for all official communication with the office. [Am. 53]

Article 52

Cooperation in the area of trade mark registration and administration

Member States shall ensure that the offices cooperate effectively with each other and with the Agency in order to promote convergence of practices and tools and achieve with a view to achieving more coherent results in the examination and registration of trade marks. [Am. 52]

Article 53

Cooperation in other areas

Member States shall ensure that the offices effectively cooperate with the Agency in all areas of their activities other than those referred to in Article 52 which are of relevance for the protection of trade marks in the Union. [Am. 54]

Article 54

Transposition

1.  Member States shall bring into force the laws, regulations and administrative provisions necessary to comply with Articles 2 to 6, 8 to 14, 16, 17, 18, 22 to 28, and 30 to 53 by 24 months after entry into force of this Directive at the latest. They shall forthwith communicate to the Commission the text of those provisions.

When Member States adopt those provisions, they shall contain a reference to this Directive or be accompanied by such a reference on the occasion of their official publication. They shall also include a statement that references in existing laws, regulations and administrative provisions to the directive repealed by this Directive shall be construed as references to this Directive. Member States shall determine how such reference is to be made and how that statement is to be formulated.

2.  Member States shall communicate to the Commission the text of the main provisions of national law which they adopt in the field governed by this Directive.

Article 55

Repeal

Directive 2008/95/EC is repealed with effect from [day after the date set out in the first subparagraph of Article 54(1) of this Directive ], without prejudice to the obligations of the Member States relating to the time limit for the transposition into national law of the Directive set out in Part B of Annex I to Directive 2008/95/EC.

References to the repealed Directive shall be construed as references to this Directive and shall be read in accordance with the correlation table in the Annex.

Article 56

Entry into force

This Directive shall enter into force on the twentieth day following that of its publication in the Official Journal of the European Union .

Articles 1, 7, 15, 19, 20, 21 and 54 to 57 shall apply from [day after the date set out in the first subparagraph of Article 54(1) of this Directive ].’

Article 57

Addressees

This Directive is addressed to the Member States.

Done at

For the European Parliament For the Council

The President The President

ANNEX

Correlation Table

Directive 2008/95/EC

This Directive

Article 1

Article 1

---

Article 2

Article 2

Article 3

Article 3(1)(a) to (h)

Article 4(1)(a) to (h)

---

Article 4(1)(i) and (j)

---

Article 4(2) and (3), first sentence

Article 3(2)(a) to (c)

Article 4(4)(a) to (c)

Article 3(2)(d)

Article 4(3), second sentence

Article 3(3), first sentence

Article 4(5)

Article 3(3), second sentence

Article 4(6)

Article 4(1) and (2)

Article 5(1) and (2)

Article 4(3) and (4)(a)

Article 5(3)(a)

---

Article 5(3)(b)

Article 4(4)(g)

Article 5(3)(c)

---

Article 5(3)(d)

Article 4(4)(b) and (c)

Article 5(4)(a) and (b)

Article 4(4)(d) to (f)

---

Article 4(5) and (6)

Article 5(5) and (6)

---

Article 8

Article 5(1), first introductory sentence

Article 10(1)

Article 5(1), second introductory sentence

Article 10(2), introductory sentence

Article 5(1)(a) and (b)

Article 10(2)(a) and (b)

Article 5(2)

Article 10(2)

Article 5(3)(a) to (c)

Article 10(3)(a) to (c)

---

Article 10(3)(d)

Article 5(3)(d)

Article 10(3)(e)

---

Article 10(3)(f)

---

Article 10(4) and (5)

Article 5(4) and (5)

Article 10(6) and (7)

---

Article 11

---

Article 12

---

Article 13

Article 6(1)(a) to (c)

Article 14(1)(a) to (c)

---

Article 14(2)

Article 6(2)

Article 14(3)

Article 7

Article 15

Article 8(1) and (2)

Article 26(1) and (2)

---

Article 26(3) to (5)

Article 9

Article 9

Article 10(1), first subparagraph

Article 16(1)

---

Article 16(2) and (3)

Article 10(1), second subparagraph

Article 10(4)

Article 10(2)

Article 10(5)

Article 10(3)

---

Article 11(1)

Article 48(1) to (3)

Article 11(2)

Article 46(1)

Article 11(3)

Article 17

Article 11(4)

Articles 17, 46(2) and Article 48(4)

---

Article 18

Article 12(1), first subparagraph

Article 19(1)

Article 12(1), second subparagraph

Article 19(2)

Article 12(1), third subparagraph

Article 19(3)

Article 12(2)

Article 20

Article 13

Article 7 and Article 21

Article 14

Article 6

---

Articles 22 to 25

---

Article 27

---

Article 28

Article 15(1)

29(1) and (2)

Article 15(2)

Article 29(3)

---

Articles 30 to 54(1)

Article 16

Article 54(2)

Article 17

Article 55

Article 18

Article 56

Article 19

Article 57

_____________

(1)OJ C 327, 12.11.2013, p. 42.
(2) Position of the European Parliament of 25 February 2014.
(3)Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ L 299, 8.11.2008, p. 25).
(4)Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ L 78, 24.3.2009, p. 1).
(5)COM(2008) 465.
(6)OJ C 140, 29.5.2010, p. 22.
(7)COM(2011) 287.
(8)OJ L 336, 23.12.1994, p. 213.
(9)Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising (OJ L 376, 27.12.2006, p. 21).
(10) Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003 (OJ L 181, 28.6.2013, p. 15).
(11) Regulation (EC) No 45/2001 of the European Parliament and of the Council of 18 December 2000 on the protection of individuals with regard to the processing of personal data by the Community institutions and bodies and on the free movement of such data (OJ L 8, 12.1.2001, p. 1).
(12) OJ C 32, 4.2.2014, p. 23.
(13) Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights (OJ L 227, 1.9.1994, p. 1).
(14) First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ L 40, 11.2.1989, p. 1).

Last updated: 5 April 2016Legal notice