IP/N/1/EU/T/1  
 
30 April 2013  
(13-2269)  Page: 1/11  
Council for Trade-Related Aspects 
of Intellectual Property Rights  Original: English/anglais/inglés  
 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
EUROPEAN UNION1 
This document reproduces the text2 of Directive 2008/95/EC of the European Parliament and of the 
Council of 22 October 2008 to approximate the laws of the Member States re lating to trade marks 
(Codified version), as notified by the European Union on 20 March 2013 under Article 63.2 of the 
Agreement (see document IP/N/1/EU/1).  
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À 
LA PROPRIÉTÉ INTELLECTUE LLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
UNION EUROPÉENNE1 
Le présent document contient le texte2 de la Directive 2008/95/CE du Pa rlement européen et du Conseil 
du 22 octobre 2008 rapprochant les lé gislations des États membres sur les marques (versi on codifiée), 
notifiée par l'Union eu ropéenne le 20 mars 2013 au titre de l'arti cle 63:2 de l'Accord (voir le document 
IP/N/1/EU/1).  
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍ CULO 63 DEL ACUERDO 
UNIÓN EUROPEA1 
En el presente documento se reproduce el texto2 de la Directiva 2008/95/CE  del Parlamento Europeo y 
del Consejo, de 22 de octu bre de 2008, relativa a la aproximación  de las legislaciones de los Estados 
miembros en materia de marcas (ver sión codificada), notificado por la Unión Europea el 20 de marzo de 
2013 en virtud de lo dispuesto en el párrafo 2 de l artículo 63 del Acuerdo (véase el documento 
IP/N/1/EU/1).  
                                               
1 Texts of legislative instruments related to tradem arks notified earlier by the European Communities 
have been circulated in the IP/N/1/EEC/T/- series of do cuments./Les textes des instruments législatifs relatifs 
aux indications géographiques notifi és antérieurement par les Communautés européennes ont été distribués 
dans la série de documents IP/N/1/EEC/T/-./Los textos de los instrumentos legislativos relativos a marcas de 
fábrica o de comercio notificados ante riormente por las Comunidades Europeas se han distribuido en la serie de 
documentos IP/N/1/EEC/T/-. 
2 In English only./En anglais seulement./En inglés solamente. IP/N/1/EU/T/1 
 
- 2 - 
 
  PP 3-11 - Offset (Pdf file attached) 
PP 3 à 11 - Offset (fichier Pdf joint) PP 3-11 - Offset (fichero Pdf adjunto) DIRECTIVES
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
(Codified version)
(Text with EEA relevance)
THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE
EUROPEAN UNION,
Having regard to the Treaty establishing the European
Community, and in particular Article 95 thereof,
Having regard to the proposal from the Commission,
Having regard to the opinion of the European Economic and
Social Committee (1),
Acting in accordance with the procedure laid down in
Article 251 of the Treaty (2),
Whereas:
(1) The content of Council Directive 89/104/EEC of21 December 1988 to approximate the laws of theMember States relating to trade marks (
3) has been
amended (4). In the interests of clarity and rationality
the said Directive should be codified.
(2) The trade mark laws applicable in the Member Statesbefore the entry into force of Directive 89/104/EECcontained disparities which may have impeded the freemovement of goods and freedom to provide services andmay have distorted competition within the commonmarket. It was therefore necessary to approximate thelaws of the Member States in order to ensure theproper functioning of the internal market.
(3) It is important not to disregard the solutions andadvantages which the Community trade mark systemmay afford to undertakings wishing to acquire trade
marks.
(4) It does not appear to be necessary to undertake full-scaleapproximation of the trade mark laws of the MemberStates. It will be sufficient if approximation is limitedto those national provisions of law which most directlyaffect the functioning of the internal market.
(5) This Directive should not deprive the Member States ofthe right to continue to protect trade marks acquiredthrough use but should take them into account only inregard to the relationship between them and trade marksacquired by registration.
(6) Member States should also remain free to fix theprovisions of procedure concerning the registration, therevocation and the invalidity of trade marks acquired byregistration. They can, for example, determine the formof trade mark registration and invalidity procedures,decide whether earlier rights should be invoked eitherin the registration procedure or in the invalidityprocedure or in both and, if they allow earlier rights tobe invoked in the registration procedure, have an oppo­sition procedure or an ex officio examination procedure or
both. Member States should remain free to determine the
effects of revocation or invalidity of trade marks.
(7) This Directive should not exclude the application to trademarks of provisions of law of the Member States otherthan trade mark law, such as the provisions relating tounfair competition, civil liability or consumer protection.
(8) Attainment of the objectives at which this approximationof laws is aiming requires that the conditions forobtaining and continuing to hold a registered trademark be, in general, identical in all Member States. Tothis end, it is necessary to list examples of signs whichmay constitute a trade mark, provided that such signs arecapable of distinguishing the goods or services of oneundertaking from those of other undertakings. Thegrounds for refusal or invalidity concerning the tradeEN 8.11.2008 Official Journal of the European Union L 299/25
(1) OJ C 161, 13.7.2007, p. 44.
(2) Opinion of the European Parliament of 19 June 2007 (OJ C 146 E,
12.6.2008, p. 76) and Council Decision of 25 September 2008.
(3) OJ L 40, 11.2.1989, p. 1.
(4) See Annex I, Part A.
IP/N/1/EU/T/1 
        - 3 -mark itself, for example, the absence of any distinctive
character, or concerning conflicts between the trade markand earlier rights, should be listed in an exhaustivemanner, even if some of these grounds are listed as anoption for the Member States which should therefore beable to maintain or introduce those grounds in theirlegislation. Member States should be able to maintainor introduce into their legislation grounds of refusal or
invalidity linked to conditions for obtaining and
continuing to hold a trade mark for which there is noprovision of approximation, concerning, for example, theeligibility for the grant of a trade mark, the renewal ofthe trade mark or rules on fees, or related to the non-compliance with procedural rules.
(9) In order to reduce the total number of trade marksregistered and protected in the Community and, conse­quently, the number of conflicts which arise betweenthem, it is essential to require that registered trademarks must actually be used or, if not used, be subjectto revocation. It is necessary to provide that a trade markcannot be invalidated on the basis of the existence of a
non-used earlier trade mark, while the Member States
should remain free to apply the same principle inrespect of the registration of a trade mark or toprovide that a trade mark may not be successfullyinvoked in infringement proceedings if it is establishedas a result of a plea that the trade mark could berevoked. In all these cases it is up to the MemberStates to establish the applicable rules of procedure.
(10) It is fundamental, in order to facilitate the free movementof goods and services, to ensure that registered trademarks enjoy the same protection under the legalsystems of all the Member States. This should not,however, prevent the Member States from granting at
their option extensive protection to those trade marks
which have a reputation.
(11) The protection afforded by the registered trade mark, thefunction of which is in particular to guarantee the trademark as an indication of origin, should be absolute in thecase of identity between the mark and the sign and thegoods or services. The protection should apply also inthe case of similarity between the mark and the sign andthe goods or services. It is indispensable to give an inter­pretation of the concept of similarity in relation to thelikelihood of confusion. The likelihood of confusion, theappreciation of which depends on numerous elementsand, 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 similaritybetween the trade mark and the sign and between thegoods or services identified, should constitute the specificcondition for such protection. The ways in which like­lihood of confusion may be established, and in particularthe onus of proof, should be a matter for nationalprocedural rules which should not be prejudiced bythis Directive.(12) It is important, for reasons of legal certainty and withoutinequitably prejudicing the interests of a proprietor of anearlier trade mark, to provide that the latter may nolonger request a declaration of invalidity nor may heoppose the use of a trade mark subsequent to his ownof which he has knowingly tolerated the use for asubstantial length of time, unless the application forthe subsequent trade mark was made in bad faith.
(13) All Member States are bound by the Paris Convention forthe Protection of Industrial Property. It is necessary thatthe provisions of this Directive should be entirelyconsistent with those of the said Convention. The obli­
gations of the Member States resulting from that
Convention should not be affected by this Directive.Where appropriate, the second paragraph ofArticle 307 of the Treaty should apply.
(14) This Directive should be without prejudice to the obli­gations of the Member States relating to the time limitfor transposition into national law of Directive89/104/EEC set out in Annex I, Part B,
HAVE ADOPTED THIS DIRECTIVE:
Article 1
Scope
This Directive shall apply to every trade mark in respect ofgoods or services which is the subject of registration or of anapplication in a Member State for registration as an individualtrade mark, a collective mark or a guarantee or certificationmark, or which is the subject of a registration or an applicationfor registration in the Benelux Office for Intellectual Property or
of an international registration having effect in a Member State.
Article 2
Signs of which a trade mark may consist
A trade mark may consist of any signs capable of being rep­
resented graphically, particularly words, including personalnames, designs, letters, numerals, the shape of goods or oftheir packaging, provided that such signs are capable of distin­guishing the goods or services of one undertaking from those ofother undertakings.
Article 3
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;EN L 299/26 Official Journal of the European Union 8.11.2008
IP/N/1/EU/T/1 
        - 4 -(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, orthe time of production of the goods or of rendering ofthe 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 inthe bona fide and established practices of the trade;
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods
themselves;
(ii) the shape of goods which is necessary to obtain a
technical result;
(iii) the shape which gives substantial value to the goods;
(f) trade marks which are contrary to public policy or to
accepted principles of morality;
(g) trade marks which are of such a nature as to deceive the
public, for instance as to the nature, quality or geographicalorigin of the goods or service;
(h) trade marks which have not been authorised by the
competent authorities and are to be refused or invalidated
pursuant to Article 6 terof the Paris Convention for the
Protection of Industrial Property, hereinafter referred to as
the ‘Paris Convention ’.
2. Any Member State may provide that a trade mark shall
not be registered or, if registered, shall be liable to be declaredinvalid 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 Community;
(b) the trade mark covers a sign of high symbolic value, in
particular a religious symbol;
(c) the trade mark includes badges, emblems and escutcheons
other than those covered by Article 6 terof the Paris
Convention and which are of public interest, unless theconsent of the competent authority to their registrationhas been given in conformity with the legislation of theMember State;(d) the application for registration of the trade mark was made
in bad faith by the applicant.
3. A trade mark shall not be refused registration or bedeclared invalid in accordance with paragraph 1(b), (c) or (d)
if, before the date of application for registration and following
the use which has been made of it, it has acquired a distinctivecharacter. Any Member State may in addition provide that thisprovision shall also apply where the distinctive character wasacquired after the date of application for registration or after thedate of registration.
4. Any Member State may provide that, by derogation from
paragraphs 1, 2 and 3, the grounds of refusal of registration orinvalidity in force in that State prior to the date of entry intoforce of the provisions necessary to comply with Directive89/104/EEC, shall apply to trade marks for which applicationhas been made prior to that date.
Article 4
Further grounds for refusal or invalidity concerning
conflicts with earlier rights
1. A trade mark shall not be registered or, if registered, shall
be liable to be declared invalid:
(a) if it is identical with an earlier trade mark, and the goods or
services for which the trade mark is applied for or is
registered are identical with the goods or services forwhich the earlier trade mark is protected;
(b) if because of its identity with, or similarity to, the earlier
trade mark and the identity or similarity of the goods orservices covered by the trade marks, there exists a likelihoodof confusion on the part of the public; the likelihood ofconfusion 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 appli­
cation for registration which is earlier than the date of
application for registration of the trade mark, takingaccount, where appropriate, of the priorities claimed inrespect of those trade marks;
(i) Community trade marks;
(ii) trade marks registered in the Member State or, in the
case of Belgium, Luxembourg or the Netherlands, at the
Benelux Office for Intellectual Property;EN 8.11.2008 Official Journal of the European Union L 299/27
IP/N/1/EU/T/1 
        - 5 -(iii) trade marks registered under international arrangements
which have effect in the Member State;
(b) Community trade marks which validly claim seniority, in
accordance with Council Regulation (EC) No 40/94 (1)o f
20 December 1993 on the Community trade mark, from
a trade mark referred to in (a)(ii) and (iii), even when thelatter 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 regis­
tration of the trade mark, or, where appropriate, of the
priority claimed in respect of the application for registrationof the trade mark, are well known in a Member State, inthe sense in which the words ‘well known ’are used in
Article 6 bisof the Paris Convention.
3. A trade mark shall furthermore not be registered or, ifregistered, shall be liable to be declared invalid if it is identicalwith, or similar to, an earlier Community trade mark within themeaning of paragraph 2 and is to be, or has been, registered forgoods or services which are not similar to those for which theearlier Community trade mark is registered, where the earlierCommunity trade mark has a reputation in the Community andwhere the use of the later trade mark without due cause wouldtake unfair advantage of, or be detrimental to, the distinctivecharacter or the repute of the earlier Community trade mark.
4. Any Member State may, in addition, provide that a trade
mark shall not be registered or, if registered, shall be liable to bedeclared invalid where, and to the extent that:
(a) the trade mark is identical with, or similar to, an earlier
national trade mark within the meaning of paragraph 2
and is to be, or has been, registered for goods or serviceswhich are not similar to those for which the earlier trademark is registered, where the earlier trade mark has a repu­
tation in the Member State concerned and where the use of
the later trade mark without due cause would take unfairadvantage of, or be detrimental to, the distinctive characteror the repute of the earlier trade mark;
(b) rights to a non-registered trade mark or to another sign
used in the course of trade were acquired prior to thedate of application for registration of the subsequent trademark, or the date of the priority claimed for the applicationfor 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;
(c) 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 (b) 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;
(d) the trade mark is identical with, or similar to, an earlier
collective trade mark conferring a right which expired
within a period of a maximum of three years precedingapplication;
(e) the trade mark is identical with, or similar to, an earlier
guarantee or certification mark conferring a right which
expired within a period preceding application the lengthof which is fixed by the Member State;
(f) the trade mark is identical with, or similar to, an earlier
trade mark which was registered for identical or similar
goods or services and conferred on them a right which
has expired for failure to renew within a period of amaximum of two years preceding application, unless theproprietor of the earlier trade mark gave his agreementfor the registration of the later mark or did not use histrade mark;
(g) the trade mark is liable to be confused with a mark which
was in use abroad on the filing date of the application andwhich is still in use there, provided that at the date of theapplication the applicant was acting in bad faith.
5. The Member States may permit that in appropriatecircumstances registration need not be refused or the trademark need not be declared invalid where the proprietor of
the earlier trade mark or other earlier right consents to the
registration of the later trade mark.
6. Any Member State may provide that, by derogation from
paragraphs 1 to 5, the grounds for refusal of registration orinvalidity in force in that State prior to the date of the entryinto force of the provisions necessary to comply with Directive89/104/EEC, shall apply to trade marks for which application
has been made prior to that date.
Article 5
Rights conferred by a trade mark
1. The registered trade mark shall confer on the proprietor
exclusive rights therein. The proprietor shall be entitled toprevent all third parties not having his consent from using inthe course of trade:
(a) any sign which is identical with the trade mark in relation
to goods or services which are identical with those for
which the trade mark is registered;EN L 299/28 Official Journal of the European Union 8.11.2008
(1) OJ L 11, 14.1.1994, p. 1.
IP/N/1/EU/T/1 
        - 6 -(b) any sign where, because of its identity with, or similarity to,
the trade mark and the identity or similarity of the goods or
services covered by the trade mark and the sign, there existsa likelihood of confusion on the part of the public; thelikelihood of confusion includes the likelihood of associa­tion between the sign and the trade mark.
2. Any Member State may also provide that the proprietor
shall be entitled to prevent all third parties not having hisconsent from using in the course of trade any sign which isidentical with, or similar to, the trade mark in relation to goodsor services which are not similar to those for which the trademark is registered, where the latter has a reputation in theMember 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, inter alia , may be prohibited under para­
graphs 1 and 2:
(a) affixing the sign to the goods or to the packaging thereof;(b) offering the goods, or putting them on the market or
stocking them for these purposes under that sign, or
offering or supplying services thereunder;
(c) importing or exporting the goods under the sign;
(d) using the sign on business papers and in advertising.
4. Where, under the law of the Member State, the use of a
sign under the conditions referred to in paragraph 1(b) orparagraph 2 could not be prohibited before the date of entry
into force of the provisions necessary to comply with Directive
89/104/EEC in the Member State concerned, the rightsconferred by the trade mark may not be relied on to preventthe continued use of the sign.
5. Paragraphs 1 to 4 shall not affect provisions in any
Member State relating to the protection against the use of a
sign other than for the purposes of distinguishing goods orservices, where use of that sign without due cause takesunfair advantage of, or is detrimental to, the distinctivecharacter or the repute of the trade mark.
Article 6
Limitation of the effects of a trade mark
1. The trade mark shall not entitle the proprietor to prohibita third party from using, in the course of trade:
(a) his own name or address;(b) indications concerning the kind, quality, quantity, intended
purpose, value, geographical origin, the time of productionof goods or of rendering of the service, or other characte­
ristics of goods or services;
(c) the trade mark where it is necessary to indicate the intended
purpose of a product or service, in particular as accessoriesor spare parts;
provided he uses them in accordance with honest practices in
industrial or commercial matters.
2. The trade mark shall not entitle the proprietor to prohibit
a third party from using, in the course of trade, an earlier rightwhich only applies in a particular locality if that right isrecognised by the laws of the Member State in question andwithin the limits of the territory in which it is recognised.
Article 7
Exhaustion of the rights conferred by a trade mark
1. The trade mark shall not entitle the proprietor to prohibitits use in relation to goods which have been put on the marketin the Community under that trade mark by the proprietor orwith his consent.
2. Paragraph 1 shall not apply where there exist legitimate
reasons for the proprietor to oppose further commercialisationof the goods, especially where the condition of the goods ischanged or impaired after they have been put on the market.
Article 8
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 ofthe Member State concerned. A licence may be exclusive ornon-exclusive.
2. The proprietor of a trade mark may invoke the rights
conferred by that trade mark against a licensee who contravenesany 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.EN 8.11.2008 Official Journal of the European Union L 299/29
IP/N/1/EU/T/1 
        - 7 -Article 9
Limitation in consequence of acquiescence
1. Where, in a Member State, the proprietor of an earlier
trade mark as referred to in Article 4(2) has acquiesced, for aperiod of five successive years, in the use of a later trade markregistered in that Member State while being aware of such use,he shall no longer be entitled on the basis of the earlier trademark either to apply for a declaration that the later trade markis invalid or to oppose the use of the later trade mark in respectof the goods or services for which the later trade mark has beenused, unless registration of the later trade mark was applied forin bad faith.
2. Any Member State may provide that paragraph 1 shall
apply mutatis mutandis to the proprietor of an earlier trade
mark referred to in Article 4(4)(a) or an other earlier right
referred to in Article 4(4)(b) or (c).
3. In the cases referred to in paragraphs 1 and 2, the
proprietor of a later registered trade mark shall not beentitled to oppose the use of the earlier right, even thoughthat right may no longer be invoked against the later trademark.
Article 10
Use of trade marks
1. If, within a period of five years following the date of thecompletion of the registration procedure, the proprietor has notput the trade mark to genuine use in the Member State inconnection with the goods or services in respect of which itis registered, or if such use has been suspended during anuninterrupted period of five years, the trade mark shall besubject to the sanctions provided for in this Directive, unlessthere are proper reasons for non-use.
The following shall also constitute use within the meaning of
the first subparagraph:
(a) use of the trade mark in a form differing in elements which
do not alter the distinctive character of the mark in the
form in which it was registered;
(b) affixing of the trade mark to goods or to the packaging
thereof in the Member State concerned solely for exportpurposes.
2. Use of the trade mark with the consent of the proprietoror by any person who has authority to use a collective mark ora guarantee or certification mark shall be deemed to constituteuse by the proprietor.
3. In relation to trade marks registered before the date of
entry into force in the Member State concerned of theprovisions necessary to comply with Directive 89/104/EEC:(a) where a provision in force prior to that date attached
sanctions to non-use of a trade mark during an uninter­rupted period, the relevant period of five years mentionedin the first subparagraph of paragraph 1 shall be deemed tohave begun to run at the same time as any period of non-use which is already running at that date;
(b) where there was no use provision in force prior to that date,
the periods of five years mentioned in the first subparagraph
of paragraph 1 shall be deemed to run from that date at theearliest.
Article 11
Sanctions for non-use of a trade mark in legal or
administrative proceedings
1. A trade mark may not be declared invalid on the groundthat there is an earlier conflicting trade mark if the latter doesnot fulfil the requirements of use set out in Article 10(1) and(2), or in Article 10(3), as the case may be.
2. Any Member State may provide that registration of a trade
mark may not be refused on the ground that there is an earlierconflicting trade mark if the latter does not fulfil therequirements of use set out in Article 10(1) and (2) or inArticle 10(3), as the case may be.
3. Without prejudice to the application of Article 12, where
a counter-claim for revocation is made, any Member State mayprovide that a trade mark may not be successfully invoked ininfringement proceedings if it is established as a result of a pleathat the trade mark could be revoked pursuant to Article 12(1).
4. If the earlier trade mark has been used in relation to part
only of the goods or services for which it is registered, it shall,for purposes of applying paragraphs 1, 2 and 3, be deemed tobe registered in respect only of that part of the goods orservices.
Article 12
Grounds for revocation
1. A trade mark shall be liable to revocation if, within a
continuous period of five years, it has not been put togenuine use in the Member State in connection with thegoods or services in respect of which it is registered, and
there are no proper reasons for non-use.
However, no person may claim that the proprietor’ s rights in a
trade mark should be revoked where, during the interval
between expiry of the five-year period and filing of the appli­cation for revocation, genuine use of the trade mark has beenstarted or resumed.EN L 299/30 Official Journal of the European Union 8.11.2008
IP/N/1/EU/T/1 
        - 8 -The commencement or resumption of use within a period of
three months preceding the filing of the application for revo­cation which began at the earliest on expiry of the continuousperiod of five years of non-use shall be disregarded wherepreparations for the commencement or resumption occuronly after the proprietor becomes aware that the applicationfor revocation may be filed.
2. Without prejudice to paragraph 1, a trade mark shall be
liable to revocation if, after the date on which it was registered:
(a) in consequence of acts or inactivity of the proprietor, it has
become the common name in the trade for a product or
service in respect of which it is registered;
(b) in consequence of the use made of it by the proprietor of
the trade mark or with his consent in respect of the goodsor services for which it is registered, it is liable to misleadthe public, particularly as to the nature, quality or geogra­phical origin of those goods or services.
Article 13
Grounds for refusal or revocation or invalidity relating to
only some of the goods or services
Where grounds for refusal of registration or for revocation orinvalidity of a trade mark exist in respect of only some of thegoods or services for which that trade mark has been appliedfor or registered, refusal of registration or revocation or inva­lidity shall cover those goods or services only.
Article 14
Establishment a posteriori of invalidity or revocation of a
trade mark
Where the seniority of an earlier trade mark which has been
surrendered or allowed to lapse is claimed for a Community
trade mark, the invalidity or revocation of the earlier trade markmay be established a posteriori .
Article 15
Special provisions in respect of collective marks, guarantee
marks and certification marks
1. Without prejudice to Article 4, Member States whose lawsauthorise the registration of collective marks or of guarantee orcertification marks may provide that such marks shall not beregistered, or shall be revoked or declared invalid, on groundsadditional to those specified in Articles 3 and 12 where the
function of those marks so requires.2. By way of derogation from Article 3(1)(c), Member States
may provide that signs or indications which may serve, in trade,to designate the geographical origin of the goods or servicesmay constitute collective, guarantee or certification marks. Sucha mark does not entitle the proprietor to prohibit a third partyfrom using in the course of trade such signs or indications,provided he uses them in accordance with honest practices inindustrial 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 16
Communication
Member States shall communicate to the Commission the textof the main provisions of national law adopted in the fieldgoverned by this Directive.
Article 17
Repeal
Directive 89/104/EEC, as amended by the Decision listed in
Annex I, Part A, is repealed, without prejudice to the obligationsof the Member States relating to the time limit for transpositioninto national law of that Directive, set out in Annex I, Part B.
References to the repealed Directive shall be construed as
references to this Directive and shall be read in accordancewith the correlation table in Annex II.
Article 18
Entry into force
This Directive shall enter into force on the 20th day following
its publication in the Official Journal of the European Union .
Article 19
Addressees
This Directive is addressed to the Member States.
Done at Strasbourg, 22 October 2008.
For the European Parliament
The President
H.-G. PÖTTERINGFor the Council
The President
J.-P. JOUYETEN 8.11.2008 Official Journal of the European Union L 299/31
IP/N/1/EU/T/1 
        - 9 -ANNEX I
PART A
Repealed Directive with its amendment
(referred to in Article 17)
Council Directive 89/104/EEC (OJ L 40, 11.2.1989, p. 1)
Council Decision 92/10/EEC (OJ L 6, 11.1.1992, p. 35)
PART B
Time limit for transposition into national law
(referred to in Article 17)
Directive Time limit for transposition
89/104/EEC 31 December 1992EN L 299/32 Official Journal of the European Union 8.11.2008
IP/N/1/EU/T/1 
        - 10 -ANNEX II
Correlation table
Directive 89/104/EEC This Directive
Article 1 Article 1
Article 2 Article 2
Article 3(1)(a) to (d) Article 3(1)(a) to (d)
Article 3(1)(e), introductory wording Article 3(1)(e), introductory wording
Article 3(1)(e), first indent Article 3(1)(e)(i)
Article 3(1)(e), second indent Article 3(1)(e)(ii)
Article 3(1)(e), third indent Article 3(1)(e)(iii)
Article 3(1)(f), (g) and (h) Article 3(1)(f), (g) and (h)
Article 3(2), (3) and (4) Article 3(2), (3) and (4)
Article 4 Article 4
Article 5 Article 5
Article 6 Article 6
Article 7 Article 7
Article 8 Article 8
Article 9 Article 9
Article 10(1) Article 10(1), first subparagraph
Article 10(2) Article 10(1), second subparagraph
Article 10(3) Article 10(2)
Article 10(4) Article 10(3)
Article 11 Article 11
Article 12(1), first sentence Article 12(1), first subparagraph
Article 12(1), second sentence Article 12(1), second subparagraph
Article 12(1), third sentence Article 12(1), third subparagraph
Article 12(2) Article 12(2)
Article 13 Article 13
Article 14 Article 14
Article 15 Article 15
Article 16(1) and (2) —
Article 16(3) Article 16
— Article 17
— Article 18
Article 17 Article 19
— Annex I
— Annex IIEN 8.11.2008 Official Journal of the European Union L 299/33
IP/N/1/EU/T/1 
        - 11 -