DIRECTIVE (EU) 2015/2436 OF THE EUROPEAN PARLIAMENT AND OF THE 
COUNCIL  
of 16 December 2015  
to approximate the laws of the Member States relating to trade marks  
(Recast)  
(Text with EEA relevance)  
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,  
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 Committe e (1), 
Acting in accordance with the ordinary legislative procedur e (2), 
Whereas:  
(1) A number of amendments should be made to Directive 2008/95/EC of the European 
Parliament and of the Counci l (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 p rovide 
services in the Union.  
(3) Trade mark protection in the Member States coexists with protection available at Union 
level through European Union trade marks (‘EU trade marks’) which are unitary in 
character and valid throughout the Union as laid down in Council Regulation (EC) No 
207/2009 (4). The coexistence and balance 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, the Commission carried out a comprehensive evaluation of the 
overall fun ctioning of the trade mark system in Europe as a whole, covering Union and 
national levels and the interrelation between the two.  
(5) In its conclusions of 25 May 2010 on the future revision of the trade mark system in the 
European Union, the Council called on the Commission to present proposals for the 
revision of Regulation (EC) No 207/2009 and Directive 2008/95/EC. The revision of tha t 
Directive should include measures to make it more consistent with Regulation (EC) No 
207/2009, 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 attra ctive 
option for applicants. In this context, the complementary relationship between the EU 
trade mark system and national trade mark systems should be ensured.  
(6) The Commission concluded in its communication of 24 May 2011 entitled ‘A single market for intellectual property rights’ that in order to meet increased demands from 
stakeholders for faster, higher quality, more streamlined trade mark registration systems,  
which are also 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, there remain areas where further 
harmonisation could have a positive impact on competitiveness and growth.  
(8) In order to serve the objective of fostering and creating a well -functioning internal market 
and to facilitate acquiring and protecting trade marks in the Union, to the benefit of the 
growth and the competitiveness of European businesses, in partic ular small and medium -
sized enterprises, it is necessary to go beyond the limited scope of approximation achieved 
by Directive 2008/95/EC and extend approximation to other aspects of substantive trade 
mark law governing trade marks protected through regist ration pursuant to 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, the principal procedural rules in the area of trade mark 
registration in the Member States and in the EU trade mark system 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 essential to ensure that registered trade marks enjoy the same protection under the 
legal systems of all the Member States. In line with the extensive protection granted to 
EU trade marks which have a reputation in the Union, extensive pro tection should also be 
granted at national level to all registered trade marks which have a reputation in the 
Member State concerned.  
(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 with regard to 
their relationship with trade marks acquired by registration.  
(12) Attainment of the objectives of this approximation of laws 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 o f signs which are capable of constituting 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, namely to ensure legal certainty and sound 
administration, it is also essential to require that the sign is capable of being represented 
in a manner which is clear, precise, self -contained, easily accessible, intelligible, durable 
and objective. A sign should therefore be permitted to be represented in any appropriate 
form using generally available technology, and thus not necessarily by graphic means, as 
long as the representation offers satisfactory guarantees to that effect.  
(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 so me of 
those grounds are listed as an option for the Member States which should therefore be 
able to maintain or introduce them in their legislation.  (15) In order to ensure that the levels of protection afforded to geographical indications by 
Union legislation and national 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. Furthermore, it is appropriate to ensure that 
the scope of absolute grounds is extended to also cover protected traditional terms for 
wine and traditional specialties guaranteed.  
(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 
event of there being identity between the mark and the corresponding 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. T he 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 a likelihood of confusion can be established, and 
in particular the onus of proof in that regard, shou ld 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 a registered earlier trade mark takes precedence over later registered trade marks, 
it is necessary to provide that the enforcement of rights which are 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. Such an approach is in conformity with Article 16(1) of 
the Agreement on trade -related aspects of intellectual property rights of 15 April 1994 
(‘TRIPS Agreement’).  
(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 the 
purposes of distinguishing goods or services. Use of the sign for purpos es other than for 
distinguishing goods or services should be subject to the provisions of national law.  
(19) The concept of infringement of a trade mark should also comprise the use of the sign as a 
trade name or similar designation, as long as such use is made for the purposes of 
distinguishing goods or services.  
(20) In order to ensure legal certainty and full consistency with specifi c 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 comparative advertising where such comparative 
advertising is contrary to Directive 2006/114/EC of the E uropean Parliament and of the 
Counci l (5). 
(21) In order to strengthen trade mark protection and combat counterfeiting more effectively, 
and in line with international obligations of the Member States under the World Trade 
Organisation (WTO) framework, in particular Article V of the General Agreement on  
Tariffs and Trade on freedom of transit and, as regards generic medicines, the 
‘Declaration on the TRIPS Agreement and public health’ adopted by the Doha WTO 
Ministerial Conference on 14 November 2001, the proprietor of a trade mark should be 
entitled to prevent third parties from bringing goods, in the course of trade, into the Member State where the trade mark is registered without being released for free 
circulation there, where such goods come from third countries and bear without 
authorisation a trade  mark which is identical or essentially identical with the trade mark 
registered in respect of such goods.  
(22) To this effect, it should be permissible for trade mark proprietors to prevent the entry of 
infringing goods and their placement in all c ustoms situations, including, in particular 
transit, transhipment, warehousing, free zones, temporary storage, inward processing or 
temporary admission, also when such goods are not intended to be placed on the market 
of the Member State concerned. In perf orming customs controls, the customs authorities 
should make use of the powers and procedures laid down in Regulation (EU) No 
608/2013 of the European Parliament and of the Counci l (6), also at the request of the 
right holders. In particular, the customs authorities should carry out the relevant controls 
on the basis of risk analysis criteria.  
(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 sub sequent 
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 regi stered 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 t he 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 active 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 Member State where the trade mark is regis tered 
without being released for free circulation there based upon similarities between the INN 
for the active ingredient in the medicines and the trade mark.  
(26) In order to enable proprietors of registered trade marks to combat counterfeiting mor e 
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 th ird 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 referri ng 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 a s 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 o f 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 t rade 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 subsequ ent 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, propr ietors 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 e xample 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.  
(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 to tal 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 international arrangements having effect in the Member State 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 r egister.  (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 mar ks, 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 collec tive 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 sh ould 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 desig nation 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 Benelux 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 pers on 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 trade marks or declaring them invalid, Member States should 
provide for an administrative procedure for revocation or declaration of invalidity within 
the longer transposition period of seven years, after the entry into force of this Directive.  
(39) It is desirable that Member States' central industrial property offices and the Benelux 
Office for Intellectual Property cooperate with each other and with the European Union 
Intellectual Property Office in all fields of trade mark registration and adminis tration 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 e ach other and with 
the European 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 pro visions 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 Paris Convention for the Protection of Industrial 
Property (‘the Paris 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 the European Union should apply.  
(42) Since t he objectives of this Directive, namely to foster 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 sufficient ly 
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 proportionality 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 the European Parliament and of the Counci l (7) governs the 
processing of personal data carried out in the Member States in the context of this 
Directive.  
(44) 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 Counci l (8) and 
delivered an opinion on 11 July 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/EE C (9) into national law as set out in Part  B of Annex I to Directive 2008/95/EC,  
HAVE ADOPTED THIS DIRECTIVE:  
CHAPTER 1  
GENERAL PROVISIONS   
Article 1  
Scope  
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 Member State as an individual trade 
mark, a guarantee or certificat ion mark or a collective 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.  
Article 2  
Definitions  
For the p urpose of this Directive, the following definitions 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) ‘register’ means the register of trade marks kept by an office.  
CHAPTER 2  
SUBSTANTIVE LAW ON TRADE MARKS   
SECTION 1   
Signs of which a trade mark may consist   
Article 3  
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 g oods or services of one undertaking from those of other undertakings; 
and 
(b) being represented on the register in a manner which enables the competent authorities and 
the public to determine the clear and precise subject matter of the protection afforded to its 
proprietor.  
SECTION 2   
Grounds for refusal or invalidity   
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, 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;  
(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 Paris Convention;  
(i) trade marks which are excluded from registration pursuant to Union legislation or the 
national law of the Member State concerned, or to international agreements to which the 
Union or the Member State concerned is party, providing for protection of designat ions 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 reproduc e in their essential elements, an earlier plant 
variety denomination registered in accordance with Union legislation or the national law of 
the Member State concerned, or international agreements to which the Union or the 
Member State concerned is party, p roviding 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. Any Member State may also 
provide that such a trade mark is not to be registered.  
3.   Any Member State 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 Member State 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 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 law of 
the Member State.  
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 Member State 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.  Article 5  
Relative grounds for refusal or invalidity  
1.   A trade mark shall not be r egistered 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 include s 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 Member State concerned 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 concerned;  
 
(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 Member State concerned, in the sense in  which the words 
‘well -known’ are used in Article 6bis of the Paris 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 Member State 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 wi thout 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 Member State 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 Member State 
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 Member State 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 t he 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 Member State may provide that, by way of derogation from paragraphs 1 to 5, the 
grounds for refusal of registration or invalidity in force in that Member State prior to the date 
of the entry into force of the provisions necessar y to comply with Directive 89/104/EEC are 
to apply to trade marks for which an 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 or of  a trade mark registered under international 
arrangements having effect in the Member State, which has been surrendered or allowed to 
lapse, is claimed for an EU trade mark, the invalidity or revocation of the trade mark 
providing the basis for the seniori ty claim may be established a posteriori , provided that the 
invalidity or revocation could 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  
An application for a decla ration of invalidity on the basis of an earlier trade mark shall not 
succeed at the date of application for invalidation if it would not have been successful at the 
filing date or the priority date of the later trade mark for any of the following reasons:  
(a) the earlier trade mark, liable to be declared invalid pursuant to Article 4(1)(b), (c) or (d), 
had not yet acquired a distinctive character as referred to in Article 4(4);  
(b) the application for a declaration of invalidity is based on Article 5(1)(b) and the earlier 
trade mark had not yet become sufficiently distinctive to support a finding of likelihood of 
confusion within the meaning of Article 5(1)(b);  
(c) the application for a declaration of invalidity is based on Article 5(3)(a) and the earlier 
trade mark had not yet acquired a reputation within the meaning of Article 5(3)(a).  
Article 9  
Preclusion of a declaration of invalidity due to acquiescence  
1.   Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 
5(2) or Article 5(3)(a) 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 s uch use, that 
proprietor 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 registratio n of the later trade mark was applied for 
in bad faith.  
2.   Member States may provide that paragraph 1 of this Article is to 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 paragra phs 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.  
SECTION 3   
Rights conferred and limitations   
Article 10  
Rights conferred by a trade mark  
1.   The registration of a trade mark shall confer on the proprietor exclusive rights therein.  
2.   Without prejudice to the rights of proprietors acquired before the filing date or the priority 
date of the registered trad e mark, the proprietor of that registered trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation 
to goods or services, any sign 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;  
(b) the sign is identical with, or similar to, the trade mark and is used in relation to go ods 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 b etween 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 to, or not similar to, those for 
which the trade mark is registered, where the latter has a repu tation 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 those purposes, 
under the 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 manner that is contrary to Directive 
2006/114/EC.  
4.   Without prejudice to the rights of proprietors acquired before the filing date or the priority 
date of the registered trade mark, the proprietor of that registered trade mark shall also be 
entitled to prevent all third parties from bringing goods, in the course of trade, into the 
Member State where the trade mark is registered, without being released for free circulation 
there, where such goods, including the packaging thereof, come from third countries and bear 
without authorisation a trade mark which is identical with the trade mark registered in respect 
of such goods, or which cannot be distinguished in its essential aspects from that trade mark.  
The ent itlement of the trade mark proprietor pursuant to the first subparagraph shall lapse if, 
during the proceedings to determine whether the registered trade mark has been infringed, 
initiated in accordance with Regulation (EU) No 608/2013, evidence is provide d by the 
declarant or the holder of the goods 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.  
5.   Where, under the law of a Member State, the use of a sign under the conditions referred 
to in paragraph 2 (b) or (c) could not be prohibited before the date of entry into force of the 
provisions necessary to comply with Directive 89/104/EEC in the Mem ber State concerned, 
the rights conferred by the trade mark may not be relied on to prevent the continued use of 
the sign.  
6.   Paragraphs 1, 2, 3 and 5 shall not affect provisions in any Member State relating to the 
protection against the use of a sign ot her than use 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  
The right to prohibit prepara tory acts in relation to the use of packaging or other 
means  
Where the risk exists that the packaging, labels, tags, security or authenticity features or 
devices, or any other means to which the trade mark is affixed, could be used in relation to 
goods or services and that use would constitute an infringement of the rights of the proprietor 
of a trade mark under Article 10(2) and (3), the proprietor of that trade mark shall have the 
right to prohibit the following acts if carried out in the course of trade:  
(a) affixing a sign identical with, or similar to, the trade mark on packaging, labels, tags, 
security or authenticity features or devices, or any other means to which the mark may be 
affixed;  
(b) offering or placing on the market, or stocking for those purposes, or importing or 
exporting, packaging, labels, tags, security or authenticity features or devices, or any other 
means to which the mark is affixed.  
Article 12  
Reproduction of trade marks in  dictionaries  
If the reproduction of a trade mark in a dictionary, encyclopaedia or similar reference work, 
in print or electronic form, gives the impression that it constitutes the generic name of the 
goods or services for which the trade mark is register ed, the publisher of the work shall, at the 
request of the proprietor of the trade mark, ensure that the reproduction of the trade mark is, 
without delay, and in the case of works in printed form at the latest in the next edition of the 
publication, accomp anied 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 do either or both of the following:  
(a) oppose the use of the trade mark by his agent or representative;  
(b) demand 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.   A trade mark shall not entitle the proprietor to proh ibit a third party from using, in the 
course of trade:  
(a) the name or address of the third party, where that third party is a natural person;  (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 that trade mark, in particular, where the use of the trade mark is necessary 
to indicate the intended purpose of a product or service, in pa rticular as accessories or 
spare parts.  
2.   Paragraph 1 shall only apply where the use made by the third party is in accordance with 
honest practices in industrial or commercial matters.  
3.   A trade mark shall not entitle the proprietor to prohibit a th ird 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 law of the Member State in question and the use of that right is within the 
limits of the territory in which it i s recognised.  
Article 15  
Exhaustion of the rights conferred by a trade mark  
1.   A 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 o r with the 
proprietor's 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 b een put on the market.  
Article 16  
Use of trade marks  
1.   If, within a period of five years following the date of the completion of the registration 
procedure, 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 regis tered, or if such use has 
been suspended during a continuous five -year period, the trade mark shall be subject to the 
limits and sanctions provided for in Article 17, Article 19(1), Article 44(1) and (2), and 
Article 46(3) and (4), unless there are proper reasons for non -use. 
2.   Where a Member State provides for opposition proceedings following registration, the 
five-year period referred to in paragraph 1 shall be calculated from the date when the mark 
can no longer be opposed or, in the event that an opp osition has been lodged, from the date 
when a decision terminating the opposition proceedings became final or the opposition was 
withdrawn.  
3.   With regard to trade marks registered under international arrangements and having effect 
in the Member State, t he five -year period 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 or when an objection on absolute or relative grounds has been notified, the period 
shall be calculated from the date when a decision terminating the opposition proceedings or a 
ruling on absolute or relative grounds for refusal became final or the opposition was 
withdrawn.  4.   The date of commencement of the five -year period, as referred to  in paragraphs 1 and 2, 
shall be entered in the register.  
5.   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 mar k 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.  
6.   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 the proprietor's rights are not liable to be revoked pursuant to Article 19 at the time the 
infringement action i s brought. If the defendant so requests, the proprietor of the trade mark 
shall furnish proof that, during the five -year period preceding the date of bringing the action, 
the trade mark has been put to genuine use as provided in Article 16 in connection wi th the 
goods or services in respect of which it is registered and which are cited as justification for 
the action, or that there are proper reasons for non -use, provided that the registration 
procedure of the trade mark has at the date of bringing the acti on been completed for not less 
than five years.  
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 would not be declared 
invalid pursuant to Article 8, Article 9(1) or (2) or Article 46(3).  
2.   In infringement proceedings, the proprietor of a trade mark shall not be entitled to 
prohibit the use of a later registered EU trade mark where that later trade mark would not be 
declared invalid pursuant to Article 53(1), (3) or (4), 54(1) or (2) or 57(2) of Regulation (EC) 
No 207/2009.  
3.   Where the proprietor of a trade mark is not entitled to prohibit the use of a later registered 
trade mark pursuant to paragraph 1 or 2, the proprietor of that later registered trade mark shall 
not be entitled to prohibit the use of the earlier trade m ark in infringement proceedings, even 
though that earlier right may no longer be invoked against the later trade mark.  
SECTION 4   
Revocation of trade mark rights   
Article 19  Absence of genuine use as ground for revocation  
1.   A trade mark shall be liable to revocation if, within a continuous five -year period, 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 cl aim 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 commencem ent or resumption of use within the three -month period preceding the 
filing of the application for revocation which began at the earliest on expiry of the continuous 
five-year period of non -use shall be disregarded where preparations for the commencement o r 
resumption occur only after the proprietor becomes aware that the application for revocation 
may be filed.  
Article 20  
Trade mark having become generic 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) as a result 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) as a result of the use made of it by the proprietor of the trade mark or with the proprietor's 
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 geographica l 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.  
SECTION 5   
Trade marks as objects of property   
Article 2 2 
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 th e undertaking.  
3.   Member States shall have procedures in place to allow for the recordal of transfers in 
their registers.  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.   Member States shall have procedures in place to allow for the recordal of rights in rem  in 
their registers.  
Article 24  
Levy of execution  
1.   A trade mark may be levied in execution.  
2.   Member States shall have procedures in place to allow fo r the recordal of levy of 
execution in their registers.  
Article 25  
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 ther eto. 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 ob taining compensation for damage suffered by him, 
be entitled to intervene in infringement proceedings brought by the proprietor of the trade 
mark.  
5.   Member States shall have procedures in place to allow for the recordal of licences in their 
registers.  
Article 26  
Applications for a trade mark as an object of property  
Articles 22 to 25 shall apply to applications for trade marks.  SECTION 6   
Guarantee or certification marks and collective marks   
Article 27  
Definitions  
For the purposes of this Directive, the following definitions apply:  
(a) ‘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 certifie d 
by the proprietor of the mark in respect of material, mode of manufacture of goods or 
performance of services, quality, accuracy or other characteristics, from goods and 
services which are not so certified;  
(b) ‘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 und ertakings.  
Article 28  
Guarantee or certification marks  
1.   Member States may provide for the registration of guarantee or certification marks.  
2.   Any natural or legal person, including institutions, authorities and bodies governed by 
public law, may ap ply for guarantee or certification marks provided that such person does not 
carry on a business involving the supply of goods or services of the kind certified.  
Member States may provide that a guarantee or certification mark is not to be registered 
unless  the applicant is competent to certify the goods or services for which the mark is to be 
registered.  
3.   Member States may provide that guarantee or certification marks are not to be registered, 
or are to be revoked or declared invalid, on grounds other t han those specified in Articles 4, 
19 and 20, where the function of those marks so requires.  
4.   By way of derogation from Article 4(1)(c), Member States may provide that signs or 
indications which may serve, in trade, to designate the geographical origin  of the goods or 
services may constitute guarantee or certification marks. Such a guarantee or certification 
mark shall not entitle the proprietor to prohibit a third party from using in the course of trade 
such signs or indications, provided that third pa rty 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.  
5.   The requirements laid down in Article 16 shall be sa tisfied where genuine use of a 
guarantee or certification mark in accordance with Article 16 is made by any person who has 
the authority to use it.  
Article 29  
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, to make contracts or accomplish other legal acts, and to sue a nd 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), Member States may provide that signs or 
indications which may serve, in trade, to designate the geographical origin  of the goods or 
services may constitute collective marks. Such 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 that third party uses them in accordance wi th 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  
Regulations governing use of a collective mark  
1.   An applicant for a colle ctive mark shall submit the regulations governing its use to the 
office.  
2.   The regulations governing use shall specify at least 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 29(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, provided that the 
person fulfils all the other conditions of the regulations.  
Article 31  
Refusal of an application  
1.   In addition to the grounds for refusal of a trade mark application provided for in Article 4, 
where appropriate with the exception of Article 4(1)(c) concerning signs or indications which 
may serve, in trade, to designate the geographical origin of th e goods or services, and Article 
5,and without prejudice to the right of an office not to undertake examination ex officio  of 
relative grounds, an application for a collective mark shall be refused where the provisions of 
point (b) of Article 27, Article 2 9 or Article 30 are not satisfied, or where the regulations 
governing use of that collective mark 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 t o 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 
regulat ions governing use of the collective mark, meets the requirements referred to in 
paragraphs 1 and 2.  
Article 32  
Use of collective marks  
The requirements of Article 16 shall be satisfied where genuine use of a collective mark in 
accordance with that Article  is made by any person who has authority to use it.  Article 33  
Amendments to the regulations governing use of a collective mark  
1.   The proprietor of a collective mark shall submit to the office any amended regulations 
governing use.  
2.   Amendments to th e regulations governing use shall be mentioned in the register unless 
the amended regulations do not satisfy the requirements of Article 30 or involve one of the 
grounds for refusal referred to in Article 31.  
3.   For the purposes of this Directive, amendm ents to the regulations governing use shall take 
effect only from the date of entry of the mention of those amendments in the register.  
Article 34  
Persons entitled to bring an action for infringement  
1.   Article 25(3) and (4) shall apply to every person w ho has the 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 as a 
result of unauthorised us e of the mark.  
Article 35  
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 the following grounds:  
(a) the proprietor does not take reasonable steps to prevent the mark being used in a manner 
that is incompatible with the conditions of use laid down in the regulations governing use, 
including any amendments thereto 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 31(2);  
(c) an amendment to the regulations governing use of the mark has been mentioned in the 
register in breach of Article  33(2), unless the proprietor of the mark, by further amending 
the regulations governing use, complies with the requirements of that Article.  
Article 36  
Additional grounds for invalidity  
In addition to the grounds for invalidity provided for in Article 4, where appropriate with the 
exception of Article 4(1)(c) concerning signs or indications which may serve, in trade, to 
designate the geographic al origin of the goods or services, and Article 5, a collective mark 
which is registered in breach of Article 31 shall be declared invalid unless the proprietor of 
the mark, by amending the regulations governing use, complies with the requirements of 
Artic le 31. 
CHAPTER 3  PROCEDURES   
SECTION 1   
Application and registration   
Article 37  
Application requirements  
1.   An application for registration of a trade mark shall contain at least all of the following:  
(a) a request for 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, which satisfies the requirements set out in point (b) of 
Article 3.  
2.   The application for a trade mark shall be subject to the payment of a fee determined by 
the Member State concerned.  
Article 38  
Date of filing  
1.   The date of filing of a trade mark application shall be the date on which the documents 
containing the i nformation specified in Article 37(1) are filed with the office by the applicant.  
2.   Member States may, in addition, provide that the accordance of the date of filing is to be 
subject to the payment of a fee as referred to in Article 37(2).  
Article 39  
Designation and classification of goods and services  
1.   The goods and services in respect of which trade mark registration is applied for shall be 
classified in conformity with the system of classification established by the Nice Agreement 
Concerning the I nternational Classification of Goods and Services for the Purposes of the 
Registration of Marks of 15 June 1957 (‘the Nice Classification’).  
2.   The goods and services for which protection is sought shall be identified by the applicant 
with sufficient cla rity and precision to enable the competent authorities and economic 
operators, on that sole basis, to determine the extent of the protection sought.  
3.   For the purposes of paragraph 2, the general indications included in the class headings of 
the Nice Cl assification or other general terms may be used, provided that they comply with 
the requisite standards of clarity and precision set out in this Article.  
4.   The office shall reject an application in respect of indications or terms which are unclear 
or im precise, where the applicant does not suggest an acceptable wording within a period set 
by the office to that effect.  
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 ap plicant requests registration for more than one class, the 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 belon gs, 
and shall present them in the order of the classes.  
7.   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. 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 40  
Observations by third parties  
1.   Member States may provide that 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 
grounds the trade mark should not be registered ex officio . 
Persons and groups or bodies, as referred to in the first subparagraph, shall not be parties to 
the proceedings before the office.  
2.   In addition to the grounds referred to in paragraph 1 of this Article, any natural or legal 
person and any group or body representing manuf acturers, 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 31(1) 
and (2). This provision may be extended to cover certification and guarantee marks where 
regulated in Member States.  
Article 41  
Division of applications and registrations  
The applicant or proprietor may divide a national trade mark application or registration into 
two or more separate applications or registrations by sending a declaration to the office and 
indicating for each divisional application or registration the goods  or services covered by the 
original application or registration which are to be covered by the divisional applications or 
registrations.  
Article 42  
Class fees  
Member States may provide that the application and renewal of a trade mark is to be subject 
to an additional fee for each class of goods and services beyond the first class.  
SECTION 2   
Procedures for opposition, revocation and invalidity   
Article 43  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 of this Article shall at least 
provide that the proprietor of an  earlier trade mark as referred to in Article 5(2) and Article 
5(3)(a), and the person authorised under the relevant law to exercise the rights arising from a 
protected designation of origin or geographical indication as referred to in Article 5(3)(c) 
shall be entitled 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 part or the totality of the goods or services in respect  of which the earlier right is 
protected or applied for, and may be directed against part or the totality of the goods or 
services in respect of which the contested mark is applied for.  
3.   The parties shall be granted, at their joint request, a minimum o f two months in the 
opposition proceedings in order to allow for the possibility of a friendly settlement between 
the opposing party and the applicant.  
Article 44  
Non-use as defence in opposition proceedings  
1.   In opposition proceedings pursuant to Artic le 43, where at the filing date or date of 
priority of the later trade mark, the five -year period within which the earlier trade mark must 
have been put to genuine use as provided for in Article 16 had expired, at the request of the 
applicant, the propriet or 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 five -year period 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 of that part of the goods or 
services only.  
3.   Paragraphs 1 and 2 of this Article shall also apply where the earlier trade mark is an EU 
trade mark. In such a case, the genuine use of the EU trade mark shall be determined in 
accordance with Article 15 of Regulation (EC) No 207/2009.  
Article 45  
Procedure for revocation or declaration of invalidity  
1.   Without prejudice to the right of the parties to appeal to the courts, Member States shall 
provide for an efficient and expeditious administrative procedure before their offices for the 
revocation or declaration of invalidity of a trade mark.  
2.   The administrative procedure for revocation shall provide that the trade mark is to be 
revoked on the grounds provided for in Articles 19 and 20.  
3.   The administrative procedure for invalidity shall provide that the trade mark is to 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(1) to (3).  
4.   The administrative procedure shall provide that at least the following are to be entitled to 
file an application fo r revocation or for a declaration of invalidity:  
(a) in the case of paragraph 2 and paragraph 3(a), 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, and which, under the terms of th e law 
governing it, has the capacity to sue in its own name and to be sued;  
(b) in the case of paragraph 3(b) of this Article, the proprietor of an earlier trade mark as 
referred to in Article 5(2) and Article 5(3)(a), and the person authorised unde r the relevant 
law to exercise the rights arising from a protected designation of origin or geographical 
indication as referred to in Article 5(3)(c).  
5.   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.  
6.   An application for a declaration of invalidity may be f iled on the basis of one or more 
earlier rights, provided they all belong to the same proprietor.  
Article 46  
Non-use as a defence in proceedings seeking a declaration of invalidity  
1.   In proceedings for a declaration of invalidity based on a registered t rade 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 five -year period 
preceding the date of the application for a declar ation 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 are cited as justification for the 
application, or that there ar e proper reasons for non -use, provided that the registration process 
of the earlier trade mark has at the date of the application for a declaration of invalidity been 
completed for not less than five years.  
2.   Where, at the filing date or date of priorit y of the later trade mark, the five -year period 
within which the earlier trade mark was to 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 under par agraph 1 of this Article, furnish proof that the trade mark was put to 
genuine use during the five -year period preceding the filing date or date of priority, or that 
proper reasons for non -use existed.  
3.   In the absence of the proof referred to in paragr aphs 1 and 2, an 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 of that part of the goods or services only.  5.   Paragraphs 1 to 4 of this Article shall also apply where the earlier trade mark is an EU 
trade mark. In such a case, genuine use of the EU trade mark shall be determined in 
accordance with Article 15 of Regulation (EC) No 207/2009.  
Article 47  
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 oc curred, may be fixed in the decision on the application for revocation, 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.  
SECTION 3   
Duration and renewal of registration   
Article 48  
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 re newed in accordance with Article 49 for further 10 -year periods.  
Article 49  
Renewal  
1.   Registration of a trade mark shall be renewed at the request of the proprietor of the trade 
mark or any person authorised to do so by law or by contract, provided that  the renewal fees 
have been paid. Member States may provide that receipt of payment of the renewal fees is to 
be deemed to constitute such a request.  
2.   The office shall inform the proprietor of the trade mark of the expiry of the registration at 
least six months before the said expiry. The office shall not be held liable if it fails to give 
such information.  
3.   The request for renewal shall be subm itted and the renewal fees shall be paid within a 
period of at least six months immediately preceding the expiry of the registration. Failing 
that, the request may be submitted within a further period of six months immediately 
following the expiry of the r egistration or of the subsequent renewal thereof. 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 mar k 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 recorded in the register.  SECTION 4   
Communicat ion with the office   
Article 50  
Communication with the office  
Parties to the proceedings or, where appointed, their representatives, shall designate an 
official address for all official communication with the office. Member States shall have the 
right to r equire that such an official address be situated in the European Economic Area.  
CHAPTER 4  
ADMINISTRATIVE COOPERATION   
Article 51  
Cooperation in the area of trade mark registration and administration  
The offices shall be free to cooperate effectively with e ach other and with the European 
Union Intellectual Property Office in order to promote convergence of practices and tools in 
relation to the examination and registration of trade marks.  
Article 52  
Cooperation in other areas  
The offices shall be free to coo perate effectively with each other and with the European 
Union Intellectual Property Office in all areas of their activities other than those referred to in 
Article 51 which are of relevance for the protection of trade marks in the Union.  
CHAPTER 5  
FINAL P ROVISIONS   
Article 53  
Data protection  
The processing of any personal data carried out in the Member States in the framework of 
this Directive shall be subject to national law implementing Directive 95/46/EC.  
Article 54  
Transposition  
1.   Member States shal l bring into force the laws, regulations and administrative provisions 
necessary to comply with Articles 3 to 6, Articles 8 to 14, Articles 16, 17 and 18, Articles 22 
to 39, Article 41, Articles 43 to 50 by 14 January 2019. Member States shall bring into f orce 
the laws, regulations and administrative provisions to comply with Article  45 by 14 January 
2023. They shall immediately communicate the text of those measures to the Commission.  
When Member States adopt those measures, 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 Directi ve 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 covered by this Directive.  
Article 55  
Repeal  
Directive 2008/95/EC is repealed with effect from 15 January 2019, without prejudice to the 
obligations of the Member States relating to the time limit for the transposition into national 
law of Directive 89/104/EEC set out in Part B of Annex I to Directiv e 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 twentiet h 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 15 January 2019.  
Article 57  
Addressees  
This Directive is addressed to the Member States.  
Done at Strasbourg, 16 December 2015.  
For the European Parliament   
The President   
M. SCHULZ  
For the Council   
The President   
N. SCHMIT  
 
(1)  OJ C  327, 12.11.2013, p.  42. 
(2)  Position of the European Parliament of 25 February 2014 (not yet published in the Official Journal) and position of 
the Council at first reading of 10 November 2015 (not yet published in the Official Journal). Position of the European 
Parliament of 15 De cember 2015.  
(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)  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). (6)  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, 
29.6.2013, p.  15). 
(7)  Directive 95/46/EC of the European Parli ament and of the Council of 24 October 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.  31). 
(8)  Regulation (EC) No 45/2001 of the European Parliament and of the Council of 18 December 2000 o n 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). 
(9)  First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States re lating 
to trade marks (OJ L 40, 11.2.1989, p.  1). 
 
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) to (l)  
Article 3(2)(a) to (c)  Article 4(3)(a) to (c)  
Article 3(2)(d)  Article 4(2)  
Article 3(3), first sentence  Article 4(4), first sentence  
— Article 4(4), second sentence  
Article 3(3), second sentence  Article 4(5)  
Article 3(4)  — 
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 5(3)(c)  
Article 4(4)(b) and (c)  Article 5(4)(a) and (b)  
Article 4(4)(d) to (f)  — 
Article 4(4)(g)  Article 5(4)(c)  
Article 4(5) and (6)  Article 5(5) and (6)  
— Article 8  
Article 5(1), first sentence  Article 10(1)  
Article 5(1), second sentence, introductory part  Article 10(2), introductory part of the sentence  
Article 5(1)(a) and (b)  Article 10(2)(a) and (b)  Article 5(2)  Article 10(2)(c)  
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)  
Article 5(4) and (5)  Article 10(5) and (6)  
— Article 11  
— Article 12  
— Article 13  
Article 6(1)(a) to (c)  Article 14(1)(a) to (c), and (2)  
Article 6(2)  Article 14(3)  
Article 7  Article 15  
Article 8(1) and (2)  Article 25(1) and (2)  
— Article 25(3) to (5)  
Article 9  Article 9  
Article 10(1), first subparagraph  Article 16(1)  
— Article 16(2) to (4)  
Article 10(1), second subparagraph  Article 16(5)  
Article 10(2)  Article 16(6)  
Article 10(3)  — 
Article 11(1)  Article 46(1) to (3)  
Article 11(2)  Article 44(1)  
Article 11(3)  Article 17  
Article 11(4)  Articles 17, 44(2) and Article 46(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 24  — Article 26  
— Article 27  
Article 15(1)  Article 28(1) and (3)  
Article 15(2)  Article 28(4)  
— Article 28(2) and (5)  
— Articles 29 to 54(1)  
Article 16  Article 54(2)  
Article 17  Article 55  
Article 18  Article 56  
Article 19  Article 57