prop · H503267 · 2018-06-12 00:00:00 — (23)In order to reconcile the need to ensure the effective enforcement of trade mark rights with the necessity to avoid hampering the free flow of trade in legitimate goods, the entitlement of the proprietor of the trade mark should lapse where, during the subsequent proceedings initiated before the judicial or other authority competent to take a substantive decision on whether the registered trade mark has been infringed, the declarant or the holder of the goods is able to prove that the proprietor of the registered trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination. (24)Article 28 of Regulation (EU) No 608/2013 provides that a right holder is to be liable for damages towards the holder of the goods where, inter alia, the goods in question are subsequently found not to infringe an intellectual property right. (25)Appropriate measures should be taken with a view to ensuring the smooth transit of generic medicines. With respect to international non-proprietary names (INN) as globally recognised generic names for substances in pharmaceutical preparations, it is vital to take due account of the existing limitations on the effect of trade mark rights. Consequently, the proprietor of a trade mark should not have the right to prevent a third party from bringing goods into a where the trade mark is registered without being released for free circulation there based upon similarities between the INN for the ingredient in the medicines and the trade mark. (26)In order to enable proprietors of registered trade marks to combat counterfeiting more effectively, they should be entitled to prohibit the affixing of an infringing trade mark to goods, and certain preparatory acts carried out prior to such affixing. (27)The exclusive rights conferred by a trade mark should not entitle the proprietor to prohibit the use of signs or indications by third parties which are used fairly and thus 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 only be considered to include the use of the personal name of the third party. Such use should further permit the use of descriptive or non-distinctive signs or indications in general. Furthermore, the proprietor should not be entitled to prevent the fair and honest use of the mark for the purpose of identifying or referring to the goods or services as those of the proprietor. Use of a trade mark by third parties to draw the consumer`s attention to the resale of genuine goods that were originally sold by, or with the consent of, the proprietor of the trade mark in the Union should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters. Use of a trade mark by third parties for the purpose of artistic expression should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters. Furthermore, this Directive should be applied in a way that ensures full respect for fundamental rights and freedoms, and in particular the freedom of expression. (28)It follows from the principle of free movement of goods that the proprietor of a trade mark should 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. (29)It is important, for reasons of legal certainty to provide that, without prejudice to his interests as a proprietor of an earlier trade mark, the latter may no longer request a declaration of invalidity or oppose the use of a trade mark subsequent to his own trade mark, 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. (30)In order to ensure legal certainty and safeguard legitimately acquired trade mark rights, it is appropriate and necessary to provide that, without prejudice to the principle that the later trade mark cannot be enforced against the earlier trade mark, proprietors of earlier trade marks should not be entitled to obtain refusal or invalidation or to oppose the use of a later trade mark if 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 if 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 a reputation. L 336/5 (31)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 actually be used in connection with the goods or services for which they are registered, or, if not used in that connection within five years of the date of the completion of the registration procedure, be liable to be revoked. (32)Consequently, a registered trade mark should only be protected in so far as it is actually used and a registered earlier trade mark should not enable its proprietor to oppose or invalidate a later trade mark if that proprietor has not put his 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. (33)It is appropriate to provide that, where the seniority of a national mark or a trade mark registered under internat ional arrangements having effect in the has been claimed for an EU trade mark and the mark providing the basis for the seniority claim has thereafter been surrendered or allowed to lapse, the validity of that mark can still be challenged. Such a challenge should be limited to situations where the mark could have been declared invalid or revoked at the time it was removed from the register. (34)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 to the extent appropriate with those already in place for EU trade marks, and should include rules on assignment and transfer, licensing, rights in rem and levy of execution. (35)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 Union collective marks. (36)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 EU trade marks. (37)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 to those applicable to EU 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 a term. In the interest of clarity and legal certainty, the Member States' central industrial property offices and the Office for Intellectual Property should, in cooperation with each other, endeavour to compile a list reflecting their respective administrative practices with regard to the classification of goods and services. (38)For the purpose of ensuring effective trade mark protection, Member States should make available an efficient administrative opposition procedure, allowing at least the proprietor of earlier trade mark rights and any person authorised under the relevant law to exercise the rights arising from a protected designation of origin or a geographical indication to oppose the registration of a trade mark application. Furthermore, in order to offer efficient means of revoking trademarks or declaring them invalid, Member States should provide for an adminis trative procedure for revocation or declaration of invalidity within the longer transposition period of seven years, after the entry into force of this Directive. L 336/6 (39)It is desirable that Member States' central industrial property offices and the Office for Intellectual Property cooperate with each other and with Union Intellectual Property Office 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 Member States should further ensure that their offices cooperate with each other and with Union Intellectual Property Office in all other areas of their activities which are relevant for the protection of trade marks in the Union. (40)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 provisions relating to unfair competition, civil liability or consumer protection. (41)Member States are bound by the Convention for the Protection of Industrial Property (‘the Convention’) and the TRIPS Agreement. It is necessary that this Directive be entirely consistent with that Convention and that Agreement. The obligations of the Member States resulting from that Convention and that Agreement should not be affected by this Directive. Where appropriate, the second paragraph of Article 351 of the Treaty on the Functioning of Union should apply. (42)Since the objectives of this Directive, namely to and create a well-functioning internal market and to facilitate the registration, administration and protection of trade marks in the Union to the benefit of growth and competitiveness, cannot be sufficiently achieved by the Member States but can rather, by reason of its scale and effects, be better achieved at Union level, the Union may adopt measures, in accordance with the principle of subsidiarity as set out in Article 5 of the Treaty on European Union. In accordance with the principle of propor tionality as set out in that Article, this Directive does not go beyond what is necessary in order to achieve those objectives. (43)Directive 95/46/EC of Parliament and of the Council (1) governs the processing of personal data carried out in the Member States in the context of this Directive. (44)Data Protection Supervisor was consulted in accordance with Article 28(2) of Regulation (EC) No 45/2001 of Parliament and of the Council (2) and delivered an opinion on 11 2013. (45)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. (46)This Directive should be without prejudice to the obligations of the Member States under Directive 2008/95/EC relating to the time limit for transposition of Council Directive 89/104/EEC (3) into national law as set out in Part B of to Directive 2008/95/EC, This Directive applies to every trade mark in respect of goods or services which is the subject of registration or of an application for registration in a as an individual trade mark, a guarantee or certification mark or a collective mark, or which is the subject of a registration or an application for registration in the Office for Intellectual Property or of an international registration having effect in a . (1) Directive 95/46/EC of Parliament and of 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data (OJ L 281, 23.11.1995, p. (2) Regulation (EC) No 45/2001 of Parliament and of the Council of 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, , p. (3) Directive 89/104/EEC of to approximate the laws of the Member States relating to trade marks (OJ L 40, , p. L 336/7 For the purpose of this Directive, the following definitions apply: (a)‘office’ means the central industrial property office of the or the Office for Intellectual Property, entrusted with the registration of trade marks; (b)‘register’ means the register of trade marks kept by an office. Signs of which a trade mark may consist Signs of which a trade mark may consist A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: (a)distinguishing the goods or services of one undertaking from those of other undertakings; and (b)being represented on the register in a which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. Grounds for refusal or invalidity 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, or another characteristic, which results from the nature of the goods themselves; (ii)the shape, or another characteristic, of goods which is necessary to obtain a technical result; (iii)the shape, or another characteristic, 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; L 336/8 (h)trade marks which have not been authorised by the competent authorities and are to be refused or invalidated pursuant to Article 6ter of the Convention; (i)trade marks which are excluded from registration pursuant to Union legislation or the national law of the concerned, or to international agreements to which the Union or the concerned 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 traditional terms for wine; (k)trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional specialities guaranteed; (l)trade marks which consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with Union legislation or the national law of the concerned, or international agreements to which the Union or the concerned is party, providing protection for plant variety rights, and which are in respect of plant varieties of the same or closely related species. 2.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. may also provide that such a trade mark is not to be registered. 3.Any may provide that a trade mark is not to be registered or, if registered, is 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 concerned or of the Union; (b)the trade mark includes 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 6ter of the Convention and which are of public interest, unless the consent of the competent authority to their registration has been given in conformity with the law of the . 4.A trade mark shall not be refused registration in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration, following the use which has been made of it, it has acquired a distinctive character. A trade mark shall not be declared invalid for the same reasons if, before the date of application for a declaration of invalidity, following the use which has been made of it, it has acquired a distinctive character. 5.Any may provide that paragraph 4 is also to apply where the distinctive character was acquired after the date of application for registration but before the date of registration. Relative grounds for refusal or invalidity 1.A trade mark shall not be registered or, if registered, shall be liable to be declared invalid where: (a)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)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)EU trade marks; (ii)trade marks registered in the concerned or, in the case of , or the , at the Office for Intellectual Property; (iii)trade marks registered under international arrangements which have effect in the concerned; L 336/9 (b)EU trade marks which validly claim seniority, in accordance with Regulation (EC) No 207/2009, of 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 the concerned, in the sense in which the words ‘well-known’ are used in Article 6bis of the Convention. 3.Furthermore, a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where: (a)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 the in respect of which registration is applied for or in which the trade mark is registered or, in the case of an EU 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; (b)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)and to the extent that, pursuant to Union legislation or the law of the concerned providing for protection of designations of origin and geographical indications: (i)an application for a designation of origin or a geographical indication had already been submitted in accordance with Union legislation or the law of the concerned prior to the date of application for registration of the trade mark or the date of the priority claimed for the application, subject to its subsequent registration; (ii)that designation of origin or geographical indication confers on the person authorised under the relevant law to exercise the rights arising therefrom the right to prohibit the use of a subsequent trade mark. 4.Any may provide that a trade mark is not to be registered or, if registered, is 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; (c)the trade mark is liable to be confused with an earlier trade mark protected abroad, provided that, at the date of the application, the applicant was acting in bad faith. 5.The Member States shall ensure that in appropriate circumstances there is no obligation to refuse registration or to declare a trade mark invalid where the proprietor of the earlier trade mark or other earlier right consents to the registration of the later trade mark. 6.Any may provide that, by way of derogation from paragraphs 1 to 5, the grounds for refusal of registration or invalidity in force in that prior to the date of the entry into force of the provisions necessary to comply with Directive 89/104/EEC are to apply to trade marks for which an application has been made prior to that date. L 336/10 a posteriori of invalidity or revocation of a trade mark