# EUR-Lex - 52013PC0162 - EN

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# 52013PC0162

**Proposal for a DIRECTIVE OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL to approximate the laws of the Member States relating to trade marks (Recast) /* COM/2013/0162 final - 2013/0089 (COD) */**

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EXPLANATORY MEMORANDUM

1.
CONTEXT OF THE PROPOSAL
1.1.
General context and grounds for the proposal

The laws of the Member States relating to
trade marks were partially harmonised by Council Directive 89/104/EEC of 21
December 1988, codified as Directive 2008/95/EC
(hereinafter referred to as ‘the Directive’). Alongside and linked to the
national trade mark systems, Council Regulation (EC) No 40/94 of 20 December
1993 on the Community trade mark, codified as Regulation (EC) No 207/2009
(hereinafter referred to as ‘the Regulation’), established a stand-alone system
for the registration of unitary rights having equal effect throughout the EU.
In that context, the Office for Harmonization in the Internal Market (OHIM) was
set up to be responsible for registering and administering Community trade
marks.

A trade mark serves to distinguish the
goods and services of a company. It is the mark through which a business can
attract and retain customer loyalty, and create value and growth. The mark
works in this case as an engine of innovation: the necessity to keep it
relevant promotes investments in R&D, which leads in turn to a continuous
process of product improvement and development. This dynamic process also has a
favourable impact on employment. In an increasingly competitive environment,
there has been a steady growth not only in the crucial role of trade marks for
market success, but also in their commercial value. This
is reflected in the increasing number of trade mark applications at both
national and EU levels, and also in the number of trade mark users. This
development has been accompanied by growing expectations on the part of
stakeholders for more streamlined and high-quality trade mark registration
systems, which are more consistent, publicly accessible and technologically
up-to-date.

In 2007, when addressing the issue of the
financial perspectives of OHIM, the Council[1]
emphasised that the establishment of OHIM had been a great success and that it
had contributed substantially to strengthening the competitiveness of the EU.
It recalled that the Community trade mark system had been designed to co-exist
with the national trade mark systems, which continued to be necessary for those
undertakings which did not want their trade marks protected at EU level. The
Council further noted the importance of the complementary work of national
trade mark offices, and called on OHIM to expand its cooperation with them in
the interest of the overall functioning of the Community trade mark system.
Last, it acknowledged that more than a decade had passed since the creation of
the Community trade mark, and therefore underlined the need for an overall
assessment of the functioning of the Community trade mark system. It invited
the Commission to start work on a corresponding study, in particular with a
view to intensifying and broadening the existing instruments of cooperation
between OHIM and national trade mark offices.

In its 2008 Small Business Act[2] the Commission pledged to make
the Community trade mark system more accessible to SMEs. Furthermore, the 2008
Communication on an Industrial Property Rights Strategy for Europe[3] underlined the Commission’s
commitment to effective and efficient trade mark protection and to a trade mark
system of high quality. It concluded that it was time for an overall
evaluation, which could form the basis for a future review of the trade mark
system in Europe and for the further improvement of cooperation between OHIM
and National Offices. In 2010, in the Communication on Europe 2020, under the
Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise
the framework of trade marks in order to improve framework conditions for
business to innovate[4].
Finally, in its 2011 IPR strategy for Europe[5],
the Commission announced a review of the trade mark system in Europe with a
view to modernising the system, both at EU and at national level, by making it
more effective, efficient and consistent overall.

1.2.
Aim of the proposal

Considered together as a package, the main
common objective of this initiative and of the parallel proposal for the
amendment to the Regulation is to foster innovation and economic growth by
making trade mark registration systems all over the EU more accessible and
efficient for businesses in terms of lower costs and complexity, increased
speed, greater predictability and legal security. These adjustments dovetail
with efforts to ensure coexistence and complementarity between the Union and
national trade mark systems.

Specifically, the present initiative to
recast the Directive is driven by the following objectives:

·
Modernising and improving the existing
provisions of the Directive, by amending outdated provisions, increasing legal
certainty and clarifying trade mark rights in terms of their scope and
limitations;

·
Achieving greater approximation of national
trade mark laws and procedures with the aim of making them more consistent with
the Community trade mark system, by (a) adding further substantive rules and
(b) introducing principal procedural rules into the Directive in accordance
with provisions contained in the Regulation;

·
Facilitating cooperation between the offices of
the Member States and OHIM for the purpose of promoting convergence of
practices and the development of common tools, by putting in place a legal
basis for this cooperation.

2.
RESULTS OF CONSULTATIONS WITH INTERESTED PARTIES
AND IMPACT ASSESSMENT
2.1.
Public consultation

This initiative is based on an evaluation
of the way the trade mark system works as in Europe as a whole and of extensive
consultations with all major stakeholders involved.

The main component of the evaluation was a
study the Max Planck Institute for Intellectual Property and Competition Law
undertook on behalf of the Commission. The study was carried out between
November 2009 and February 2011[6]. In addition to expert analysis, the study involved consultations
with stakeholders. It included a survey among users of the Community trade mark
system, contributions from organisations representing trade mark users at
national, European and international level, and a hearing in June 2010
involving these organisations. Lastly, the Institute consulted the Intellectual
Property Offices of all the Member States and OHIM.

The Final Report of the MPI study concluded
that the basics of the European trade mark system are solid. In particular, the
procedures followed by OHIM generally met business needs and expectations.
There was further consensus that the coexistence of Community and national
trade mark rights is fundamental and necessary for the efficient functioning of
a trade mark system that meets the requirements of companies of different
sizes, markets and geographical needs. The Report nevertheless found that there
was a need for modernisation and improvement of the system. It highlighted, in
particular, the need to achieve greater consistency between the Community trade
mark and national trade mark systems by further harmonising the trade mark laws
of Member States both within and beyond the current scope of the Directive.

Responding to the interim results of the
study, the Council adopted Conclusions on 25 May 2010[7]. While noting the existing
inconsistencies between the Community trade mark and national regimes, these
conclusions called on the Commission to include in its proposals measures to
make the Directive more consistent with the Regulation, and thereby further
contribute to reducing areas of divergence within the trade mark system in
Europe as a whole.

As a follow up to the MPI study, the
Commission services convened a hearing of user associations on 26 May 2011. The
hearing confirmed that there was broad agreement among users of the trade mark
system in Europe that the present level of approximation between national trade
mark laws, as well as with the Community trade mark system, has not been sufficient.
User organisations unanimously stated that further harmonisation of national
trade mark laws was required, with regard to both substantive law and
procedural issues.

2.2.
Impact Assessment

The impact assessment carried out for both
the review of the Regulation and of the Directive identified two main problems:
the first relates to the divergent provisions of the existing regulatory
framework, and the second to the low level of cooperation between trade mark
offices in the Union. While the latter problem is due to be addressed in the
review of the Regulation, the issue of divergent provisions must be dealt with
in the review of the Directive.

The consulation and evaluation exercise has
revealed that the business environment in the trade mark field remains very
mixed in spite of the partial harmonisation of national laws dating back to
early 1990s. The level of harmonisation imposed by the Directive was quite low,
focusing on a restricted number of substantive rules that were considered at
that time to affect the functioning of the internal market most immediately,
whereas a large number of areas, in particular those relating to procedures,
were left unharmonised. Moreover, the Regulation was enacted several years
after the Directive, which meant that at the time when the Directive came into
being there was no ‘common benchmark’ against which the efficiency of national
proceedings could be measured. However, the procedures followed by OHIM have
now been in place for more than 15 years, and are generally regarded as meeting
business needs and expectations.

As a result, the current landscape of Union
trade mark law is still characterised by a wide divergence between national
rules and procedures, both among themselves and in relation to the rules and
procedures applied by OHIM, and no attempt has ever been made to apply best
practice with regard to procedures.

The existing divergences between national
systems and the Community trade mark system are regarded significant. They are
due to the fact that the Directive does not cover procedural aspects and that a
number of important substantive law issues are not yet harmonised. Together
with the limited convergence of practices and tools at trade mark offices -
which is due to a low level of cooperation - the existing divergencies of trade
mark laws and procedures limit accessibility to the systems of trade mark
protection, involve a great deal of legal uncertainty, and endanger the
complementary relationship between the Community trade mark and national trade
mark systems. Furthermore, they prevent a level playing field for companies,
with the consequent adverse impacts on the competitiveness of EU companies and
the competiveness of the Union as a whole.

The following possible options for
resolving the problem were considered:

·
Option 1: No further approximation of trade mark laws
and procedures;

·
Option 2: Partial
expansion of the approximation of national laws and their consistency with the
Community trade mark system. This would include aligning the principal procedural
rules with the relevant provisions of the Regulation, including those where
existing difference create major problems from the users' perspective, and
where such alignments are deemed indispensable for creating a harmonious,
complementary system of trade mark protection in Europe. It would also cover
the alignment of further aspects of substantive law in accordance with the
provisions of the Regulation;

·
Option 3: Full
approximation of national trade mark laws and procedures. This approach would
be based on option 2, embrace all of its components, but also include all
remaining aspects of substantive trade mark law and procedures;

·
Option 4: A
single trade mark rulebook which would replace Member States' trade mark laws
in their entirety, by setting uniform rules across the Union.

The impact assessment concluded that option
2 would be proportionate and would best serve to achieve the objectives
pursued.

3.
LEGAL BASIS AND SUBSIDIARITY

Article 114(1) of the Treaty empowers the
European Parliament and the Council to adopt measures for the approximation of
the provisions laid down by law, regulation or administrative action in Member
States which have as their object the establishment and functioning of the
internal market.

The problems identified in relation to the
significant divergences in the regulatory framework either prevent, or
substantially distort, the level playing field for EU companies with further
adverse consequences for their competitiveness and that of the EU as a whole.
It is therefore advisable to adopt measures capable of improving the conditions
for the functioning of the internal market. Measures aimed at extending the
current level of approximation through the Directive can only be taken at Union
level. Furthermore, action at Union level is the only way to ensure consistency
with the Community trade mark system.

In this context, it has to be borne in mind
that the Community trade mark system is embedded in the European trade mark
system - the latter being built on the principle of coexistence and
complementarity between national and Union-wide trade mark protection. While
the Regulation provides a comprehensive system in which all issues of
substantive and procedural law are provided for, the current level of
legislative approximation provided for in the Directive is limited to selected
provisions of substantive law only. In order to be able to ensure effective and
sustainable coexistence and complementarity between the components involved, it
is therefore necessary to create an overall harmonious system of trade mark
protection in the Union with substantially similar substantive rules and at
least principal procedural provisions which are compatible.

4.
BUDGETARY IMPLICATION

The proposal will not have an impact on the
European Union budget and is therefore not accompanied by the financial
statement provided for under Article 31 of the Financial Regulation (Regulation
(EU, Euratom) No 966/2012 of the European Parliament and of the Council of 25 October
2012 on the financial rules applicable to the general budget of the Union and
repealing Council Regulation (EC, Euratom) No 1605/2002).

5.
DETAILED EXPLANATION OF THE PROPOSAL

The proposed amendments are presented in
accordance with the objectives pursued by the recast of the Directive as set
out in section 1.2 above.

5.1.
Modernising and improving existing provisions

- Definition of a trade mark (Article 3)

At present, signs must be capable of being
represented graphically in order to be protected as a trade mark. This
requirement of ‘graphic representability’ is out of date. It creates a great
deal of legal uncertainty around the representation of certain non-traditional
marks, such as mere sounds. In the latter case, representation by other than
graphical means (e.g. by a sound file) may even be preferable to graphic
representation, if it permits a more precise identification of the mark and
thereby serves the aim of enhanced legal certainty. The proposed new definition
does not restrict the permissible means of representation to graphic or visual
representation but leaves the door open to register matter that can be
represented by technological means offering satisfactory guarantees. The idea
is not to go for a boundless extension of the admissible ways to represent a
sign, but to provide for more flexibility in that respect while ensuring
greater legal certainty.

- Rights conferred by a trade mark
(Articles 10 and 11)

1.         Rights conferred without prejudice
to prior rights

Neither the Directive nor the Regulation
contains a clear rule stating that the trade mark proprietor cannot
successfully invoke his rights against the use of an identical or similar sign
which is already the subject of an earlier right. In line with Article 16(1) of
the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS
Agreement)[8],
this proposal would make it clear that infringement claims are without
prejudice to earlier rights.

2.         Cases of double identity

The recognition of additional trade mark
functions under Article 5(1)(a) of the Directive has created legal uncertainty.
In particular, the relationship between double identity cases and the extended
protection afforded by Article 5(2) to trade marks having a reputation has
become unclear[9].
In the interest of legal certainty and consistency, it is clarified that in cases
of both double identity under Article 5(1)(a) and similarity under Article 5(1)(b)
it is only the origin function which matters.

3.         Use as a trade or company name

According to the Court of Justice[10], Article 5(1) of the Directive
is applicable where the public considers the use of a company name as (also)
relating to the goods or services offered by the company. It is therefore
appropriate to treat trade name use of a protected trade mark as an infringing
act, if the requirements of use for goods or services are met.

4.         Use in comparative advertising

Directive 2006/114/EC of 12 December 2006
concerning misleading and comparative advertising[11] regulates the conditions under
which advertising, which explicitly or by implication identifies a competitor or
goods or services offered by a competitor, is permissible. The relationship of
Directive 2006/114/EC to the legislation on trade marks has given rise to
doubts. It is therefore appropriate to clarify that the trade mark owner may
prevent the use of his trade mark in comparative advertising where such
comparative advertising does not satisfy the requirements of Article 4 of
Directive 2006/114/EC.

5.         Consignments from commercial
suppliers

It should be made clear that the importing
of goods into the Union is also prohibited where it is only the consignor who
acts for commercial purposes. This is to ensure that a trade mark owner has the
right to prevent businesses (whether located in the EU or not) from importing
goods located outside the EU that have been sold, offered, advertised or
shipped to private consumers, and to discourage the ordering and sale of
counterfeit goods in particular over the internet.

6.         Goods brought into the customs
territory

According to the Court of Justice in the Philips/Nokia
judgment[12],
the entry, presence and movement of non-EU goods in the customs territory of
the EU under a suspensive procedure does, under the existing acquis, not
infringe intellectual property rights as conferred by substantive law of the
Union and its Member States. Such goods can only be classified as counterfeit
once there is proof that they are subject of a commercial act directed at EU
consumers, such as sale, offer for sale or advertising. The implications of the
Philips/Nokia judgment have met with strong criticism from stakeholders
as placing an inappropriately high burden of proof on rights holders, and
hindering the fight against counterfeiting. It is evident that there is an
urgent need to have in place a European legal framework enabling a more
effective fight against the counterfeiting of goods as a fast-growing activity.
It is therefore proposed to fill the existing gap by entitling right holders to
prevent third parties from bringing goods, from third countries, bearing
without authorization a trade mark which is essentially identical to the trade
mark registered in respect of those goods, into the customs territory of the
Union, regardless of whether they are released for free circulation.

7.         Preparatory acts

Neither the Directive nor the Regulation contains
any provisions allowing proceedings against the distribution and sale of labels
and packaging and similar items which may subsequently be combined with illicit
products. Some national laws have explicit rules covering this activity.
Including a rule on this in the Directive and the Regulation is appropriate to
provide another practical, relevant and efficient contribution to the combat
against counterfeiting.

- Limitation of the effects of a trade
mark (Article 14)

The limitation in Article 14(1)(a) of the
Directive is restricted in this proposal to cover the use of personal names
only in accordance with the Joint Statement of the Council and the Commission[13]. For reasons of consistency,
the limitation in Article 14(1)(b) is extended to cover also the use of
non-distinctive signs or indications. It is also considered appropriate to
provide in Article 14(1)(c) for an explicit limitation covering referential use
in general. Finally, a separate paragraph clarifies the conditions under which
the use of a trade mark shall not be considered as complying with honest
business practices.

5.2.
Achieving greater approximation of substantive
law

- Protection of geographical indications
and traditional terms (Articles 4 and 5)

Contrary to the Regulation, the grounds for
refusal contained in the Directive do not address conflicts with protected
geographical indications, traditional terms for wines and traditional
specialities guaranteed. Consequently, there is no guarantee that the levels of
protection afforded to those rights by other instruments of Union law[14] are actually being applied in
a uniform and exhaustive manner in trade mark examination throughout the Union,
in particular, when applying absolute grounds for refusal. It is therefore
proposed to insert corresponding provisions relating to geographical
indications, traditional terms for wine and traditional specialities guaranteed
in the Directive.

- Protection of trade marks with
reputation (Articles 5 and 10)

Articles 5 and 10 convert extended
protection into mandatory provisions in order to ensure that, in all Member
States, national trade marks with reputation enjoy the same level of protection
as that afforded to Community trade marks.

- Trade marks as objects of property
(Articles 22, 23, 24, 25, 26 and 27)

Apart from some basic rules concerning
licensing, and unlike the Regulation, the Directive does not comprise
provisions regarding other aspects of trade marks as objects of property, such
as transfers or right in rem. As a result, vital aspects of the commercial
exploitation of trade marks are regulated poorly or differently across the
Union. It is therefore proposed that the Directive be complemented by a
corresponding body of rules addressing trade marks as objects of property as
contained in the Regulation.

- Collective marks (Articles 28, 30, 31,
32, 33, 34, 35, 36 and 37)

In order to come into line with the
Regulation, the amendments to these Articles of the Directive provide for a set
of specific provisions for the registration and protection of collective marks.
They are protectable in a number of Member States and have proved to be
particularly successful in protecting the economic value inherent in such
commercial instruments. Although at EU level, and in most Member States,
collective marks require a holder – normally an association – whose members use
the mark, this is not so in other Member States, and this makes it difficult to
keep this type of trade mark clearly apart from certification marks.

5.3.
Achieving alignment of principal procedural
rules

- Designation and classification of
goods and services (Article 40)

In line with the proposal on the
Regulation, this Article lays down common rules for the designation and
classification of goods and services. These rules follow the principles
established by the Court of Justice[15],
according to which goods and services for which protection is sought need to be
identified by the applicant with sufficient clarity and precision to enable the
competent authorities and businesses to determine the extent of protection the
trade mark confers. The general indications of the class headings of the Nice
Classification may be used to identify goods or services provided that such
identification is sufficiently clear and precise. Article 40 further clarifies
that the use of general terms has to be interpreted as including only all goods
or services clearly covered by the literal meaning of the term.

- Ex officio examination (Article 41)

In line with the Regulation, this Article
provides that the ex officio examination of whether a trade mark application is
eligible for registration shall be confined to the absence of grounds
concerning the mark itself. The ex-officio examination of relative grounds
creates several unnecessary barriers to the registration of trade marks. Companies
are obliged to undergo superfluous expenses and delays and they often fall
victim to extortion. The earlier right on which the objection is based may not
be used by its owner, which means that the offices concerned raise an objection
on the basis of a right that could not have been validly relied on by its
proprietor to prevent the registration or use of a later mark. Hence, the ex
officio system leads to artificial disputes, and distorts competition by
erecting unjustified barriers to market entry.

Finally, the ex officio approach creates
legal uncertainty, since offices applying the ex-officio system raise
objections, as far as earlier rights are concerned, only on the basis of
earlier registered rights that have been filed for identical or similar goods
and services. Accordingly, they cannot offer a guarantee that an application
which successfully passes the ex-officio control will not subsequently be
opposed on the basis of a mark which has acquired reputation in the marketplace
and/or on the basis of an earlier well-known mark that has not been registered.
However, this leads to an unacceptable duplication of procedures which are both
time consuming and inefficient.

- Fees (Article 44)

In order to reduce the potential of
cluttering of the registries, this Article aims at aligning the fee structure
of offices by making the registration and renewal of a trade mark subject to
the payment of an additional (class) fee for each class of goods and services
beyond the first class which should be included in the initial
(application/registration) fee.

- Opposition procedure (Article 45)

This Article requires Member States to
provide for an efficient and expeditious administrative procedure to oppose the
registration of a trade mark application on the basis of earlier rights before
their offices. An administrative opposition procedure is already available
under the Regulation and in almost all Member States.

- Non use as defence in opposition
proceedings (Article 46)

In line with the Regulation, this Article enables
the person applying for registration of a trade mark to raise the defence of
non-use in relation to an opposition filed by the proprietor of an earlier
trade mark where, at the filing date or date of priority of the later trade
mark, the earlier trade mark has been registered for not less than five years.

- Procedure for revocation or
declaration of invalidity (Article 47)

This Article obliges Member States to
provide for an administrative procedure to challenge the validity of a trade
mark registration before their offices. In some Member States, trade mark
applicants and owners cannot challenge the validity of the earlier rights
relied upon against their trade mark in the same proceedings, but need to
contest the validity of a prior trade mark in court proceedings. This delays
proeedings and usually requires the appointment of a qualified lawyer to
prosecute the case. These systems are exceedingly long, cumbersome and
expensive. In comparison, the administrative cancellation procedures, as applied
at OHIM and the National Offices, are much simpler since the validity of
earlier rights can be raised as a defence in the same proceedings and without
the need for professional representation. In practice, this means that
applicants for a Community trade mark may successfully defend themselves
against an opposition and obtain a trade mark years earlier and at considerably
less expense than a national applicant.

- Non use as defence in proceedings
seeking a declaration of invalidity (Article 48)

In line with the Regulation, this Article
enables the person in whose name a trade mark has been registered to raise the
defence of non-use in proceedings for a declaration of invalidity based on
earlier trade mark, where at the date of the application for a declaration of
invalidity the earlier trade mark has been registered for not less than five
years.

5.4.
Facilitating cooperation between offices
(Article 52)

As a complement to the legal framework for
cooperation proposed in the context of the review of the Regulation, Article 52
provides a legal basis to facilitate cooperation between OHIM and the
intellectual property offices of the Member States for the purpose of promoting
convergence of practices and the development of common tools.

ê 2008/95/EC
(adapted)

2013/0089 (COD)

Proposal for a

DIRECTIVE OF THE EUROPEAN PARLIAMENT
AND OF THE COUNCIL

to approximate the laws of the Member
States relating to trade marks

(Recast)

(Text with EEA relevance)

THE EUROPEAN PARLIAMENT AND THE
COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty establishing the European Community Ö on the
Functioning of the European Union Õ , and in
particular Article 95 Ö 114 Õ 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 Committee[16],

Acting in accordance with the ordinary
legislative procedure,

Whereas:

ê 2008/95/EC
recital 1 (adapted)

ð new

(1)
ð A number of amendments are to
be made to ï The content of Council Directive
89/104/EEC of 21 December 1988 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[17] has been amended[18]. In the interests of clarity,
and rationality the said Ö that Õ Directive should be codified ð recast ï .

ê 2008/95/EC recital 2 (adapted)

(2)
The Ö Directive
2008/95/EC has harmonised central provisions of substantive Õ trade mark laws applicable in the Member States before the
entry into force of Directive 89/104/EEC contained disparities which may have
impeded Ö which at
the time of adoption were considered as most directly affecting the functioning
of the internal market by impeding Õ the free
movement of goods and Ö the Õ freedom to
provide services Ö in the
Union Õ and may have distorted competition within the
common market. It was therefore necessary to approximate the laws of the Member
States in order to ensure the proper functioning of the internal market.

ê 2008/95/EC
recital 3 (adapted)

It is important not
to disregard the solutions and advantages which the Community trade mark system
may afford to undertakings wishing to acquire trade marks.

ê 2008/95/EC
recital 4

It does not appear to be necessary to undertake
full-scale approximation of the trade mark laws of the Member States. It will
be sufficient if approximation is limited to those national provisions of law
which most directly affect the functioning of the internal market.

ò new

(3)
Trade mark protection
in the Member States coexists with protection available at Union level through
European trade marks which are intellectual property rights unitary in
character and valid throughout the Union as laid down in Council Regulation
(EC) No 207/2009 of 26 February 2009 on the European trade mark[19]. Coexistence of trade mark
systems at national and Union level in fact constitutes a cornerstone of the
Union’s approach to intellectual property protection.

(4)
Further to the
Commission's Communication of 16 July 2008 on an Industrial Property Rights
Strategy for Europe[20],
the Commission carried out a comprehensive evaluation of the overall
functioning of the trade mark system in Europe as a whole, covering Union and
national levels and the interrelation between each other.

(5)
In its conclusions of
25 May 2010 on the future revision of the Trade Mark system in the European
Union[21],
the Council called on the Commission to present proposals for the revision of
Regulation (EC) No 207/2009 and Directive 2008/95/EC. In doing so, the revision
of the latter should include measures to make it more consistent with
Regulation (EC) No 207/2009 and would thus reduce the areas of divergence
within the trade mark system in Europe as a whole.

(6)
The Commission
concluded in its Communication ‘A Single Market for Intellectual Property
Rights’ of 24 May 2011[22]
that in order to meet increased demands from stakeholders for faster, higher
quality, more streamlined trade mark registration systems, which are more
consistent, user friendly, publicly accessible and technologically up-to-date,
there is a necessity to modernise the trade mark system in the Union as a whole
and adapt it to the Internet era.

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

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

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

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

ê 2008/95/EC recital 5 (adapted)

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

ê 2008/95/EC
recital 6

Member States should also remain free to fix the
provisions of procedure concerning the registration, the revocation and the
invalidity of trade marks acquired by registration. They can, for example,
determine the form of trade mark registration and invalidity procedures, decide
whether earlier rights should be invoked either in the registration procedure
or in the invalidity procedure or in both and, if they allow earlier rights to
be 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.

ê 2008/95/EC
recital 8 (adapted)

ð new

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

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

(14)
Ö Furthermore, Õ Tthe
grounds for refusal or invalidity concerning the trade mark itself, for example, Ö including Õ the absence of
any distinctive character, or concerning conflicts between the trade mark and
earlier rights, should be listed in an exhaustive manner, even if some of these
grounds are listed as an option for the Member States which should therefore be
able to maintain or introduce those grounds in their legislation. Member States
should be able to maintain or 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 no provision of approximation, concerning, for
example, the eligibility for the grant of a trade mark, the renewal of the
trade mark or rules on fees, or related to the non-compliance with procedural
rules.

ê 2008/95/EC
recital 9

In order to reduce the total number of trade marks
registered and protected in the Community and, consequently, the number of
conflicts which arise between them, it is essential to require that registered
trade marks must actually be used or, if not used, be subject to revocation. It
is necessary to provide that a trade mark cannot 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 in respect of the registration of a
trade mark or to 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. In all these cases it is up to the Member States
to establish the applicable rules of procedure.

ê 2008/95/EC
recital 10

It is fundamental, in order to facilitate the free
movement of goods and services, to ensure that registered trade marks enjoy the
same protection under the legal systems 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.

ò new

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

ê 2008/95/EC recital 11

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

ò new

(17)
In order to ensure
legal certainty and full consistency with the principle of priority, under
which an earlier registered trade mark takes precedence over later registered
trade marks, it is necessary to lay down that the enforcement of rights
conferred by a trade mark should be without prejudice to the rights of
proprietors acquired prior to the filing or priority date of the trade mark.
This is in conformity with Article 16(1) of the Agreement on trade related
aspects of intellectual property rights of 15 April 1994 (hereinafter: ‘TRIPS Agreement’)[23].

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

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

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

(21)
In order to ensure
legal certainty and full consistency with specific Union legislation, it is appropriate
to provide that the proprietor of a trade mark should be entitled to prohibit a
third party from using a sign in a comparative advertising where such
comparative advertising is contrary to Directive 2006/114/EC of the European
Parliament and of the Council of 12 December 2006 concerning misleading and
comparative advertising[24].

(22)
With the aim of
strengthening trade mark protection and combatting counterfeiting more
effectively, the proprietor of a registered trade mark should be entitled to
prevent third parties from bringing goods into the customs territory of the Member
State without being released for free circulation there, where such goods come
from third countries and bear without authorization a trade mark which is
essentially identical to the trade mark registered in respect of such goods.

(23)
            In order
to more effectively prevent the entry of infringing goods, particularly in the
context of sales over the Internet, the proprietor should be entitled to
prohibit the importing of such goods into the Union where it is only the
consignor of the goods who acts for commercial purposes.

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

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

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

ê 2008/95/EC recital 12

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

ò new

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

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

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

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

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

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

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

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

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

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

ê 2008/95/EC recital 7

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

ê 2008/95/EC recital 13 (adapted)

(39)
All Member States are bound by the Paris
Convention for the Protection of Industrial Property Ö (Paris Convention) and the TRIPS Agreement Õ. It is necessary
that the provisions of this Directive should be entirely consistent with those
of the said Convention Ö and Agreement Õ. The
obligations of the Member States resulting from that Convention Ö and Agreement Õ should not be
affected by this Directive. Where appropriate, the second paragraph of Article 307 Ö 351 Õ of the Treaty should
apply.

ò new

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

ê 2008/95/EC recital 14 (adapted)

(41)
This Directive should be without prejudice to
the obligations of the Member States relating to the time limit for
transposition into national law of Ö the Õ Directive 89/104/EEC set
out in Annex I, Part B of Annex I to Directive 2008/95/EC,

ê 2008/95/EC
(adapted)

HAVE ADOPTED THIS DIRECTIVE:

Chapter 1

Ö General
provisions Õ

ê 2008/95/EC

Article 1

Scope

This Directive shall apply to every trade
mark in respect of goods or services which is the subject of registration or of
an application in a Member State for registration as an individual trade mark,
a collective mark or a guarantee or certification mark, or which is the subject
of a registration or an application for registration in the Benelux Office for
Intellectual Property or of an international registration having effect in a
Member State.

ò new

Article 2

Definitions

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

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

(b)          ‘Agency’
means the European Union Trade Marks and Designs Agency established in accordance
with Article 2 of Regulation (EC) No 207/2009;

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

ê 2008/95/EC
(adapted)

Chapter 2

Ö The law
on trade marks Õ

Section 1

Ö Signs of which a trade mark may consist Õ

Article 23

Signs of which a trade mark may
consist

A trade mark may consist of any signs capable of
being represented graphically, Ö in
particular Õ particularly
words, including personal names, designs, letters, numerals, Ö colours
as such, Õ the shape of
goods or of their packaging, Ö or
sounds, Õ provided that
such signs are capable of:

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

ò new

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

ê 2008/95/EC
(adapted)

Section 2

Ö Grounds for refusal or invalidity Õ

Article 34

Ö Absolute Õ Ggrounds
for refusal or invalidity

ê 2008/95/EC

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

(a)          signs which cannot constitute a
trade mark;

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

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

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

(e)          signs which consist exclusively
of:

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

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

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

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

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

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

ò new

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

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

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

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

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

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

ê 2008/95/EC

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

ê 2008/95/EC
(adapted)

(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 Ö Union Õ Community;

ê 2008/95/EC

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

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

(d)          the application for registration of the trade mark was
made in bad faith by the applicant.

ê 2008/95/EC
(adapted)

ð new

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

6. Any Member State may in
addition provide that this provision Ö paragraph 5 Õ shall also
apply where the distinctive character was acquired after the date of
application for registration or after ð and before ï the date of registration.

4. Any Member State may provide that, by derogation
from paragraphs 1, 2 and 3, the grounds of refusal of registration or
invalidity in force in that State prior to the date of entry into force of the
provisions necessary to comply with Directive 89/104/EEC, shall apply to trade
marks for which application has been made prior to that date.

Article 45

Further Ö Relative Õ grounds for
refusal or invalidity concerning
conflicts with earlier rights

ê 2008/95/EC

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

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

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

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

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

ê 2008/95/EC
(adapted)

(i) Ö European Õ Community trade
marks;

ê 2008/95/EC

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

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

ê 2008/95/EC
(adapted)

(b) Ö European Õ Community trade
marks which validly claim seniority, in accordance with Council Regulation (EC) No 40/94[25]
of 20 December 1993 on the Community trade mark 207/2009, from a trade mark referred to in points
(a)(ii) and (iii), even when the latter trade mark has been surrendered or
allowed to lapse;

ê 2008/95/EC

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

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

ê 2008/95/EC
(adapted)

ð new

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

(a)          if it is identical with, or similar to, an earlier Community trade mark ð irrespective of whether the goods or services for
which it is applied or ï within the meaning of paragraph 2 and is to be, or
has been, registered for goods or
services which are ð identical with, similar to or ï not similar to those for which the earlier Community trade mark is registered, where the earlier Community trade mark has a reputation in the Community ð a Member State or, in case of a European trade mark,
has a reputation in the Union ï and where 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 Community trade mark.;

ò new

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

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

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

ê 2008/95/EC
(adapted)

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

ê 2008/95/EC

(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 services which are not similar to those for
which the earlier trade mark is registered, where the earlier trade mark has a
reputation in the Member State concerned and where 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;

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

(cb)        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 (ba) 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 preceding application;

(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 length of 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 a maximum of two years preceding application, unless the
proprietor of the earlier trade mark gave his agreement for the registration of
the later mark or did not use his trade 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 and which is still in
use there, provided that at the date of the application the applicant was
acting in bad faith.

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

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

ê 2008/95/EC
(adapted)

ð new

Article 146

Establishment a posteriori
of invalidity or revocation of a trade mark

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

Article 7

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

Ö 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. Õ

ò new

Article 8

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

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

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

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

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

ê 2008/95/EC
(adapted)

ð new

Article 9

Limitation Ö Preclusion
of a declaration of invalidity Õ in
consequence of acquiescence

1. Where, in a Member State, the proprietor
of an earlier trade mark as referred to in Article 45(2) ð and (3) ï has acquiesced, for a period of five successive years, in the use
of a later trade mark registered in that Member State while being aware of such
use, he shall no longer be entitled on the basis of the earlier trade mark either to apply
for a declaration that the later trade mark is invalid or to oppose
the use of the later trade mark in respect of
the goods or services for which the later trade mark has been used, unless
registration of the later trade mark was applied for in bad faith.

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 Ö any Õ other earlier
right referred to in Article 45(4)(ab) or (bc).

ê 2008/95/EC

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

ê 2008/95/EC
(adapted)

ð new

Section 3

Ö Rights conferred and limitations Õ

Article 510

Rights conferred by a trade mark

1. The registered Ö registration
of a Õ trade mark
shall confer on the proprietor exclusive rights therein.

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

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

(b)          any Ö the Õ sign where, because of
its identity Ö is identical Õ with, or
similarity to, the trade mark and the identity or similarity of the Ö is used for Õ goods or
services covered by Ö which are identical with or similar to the goods or services for
which Õ the trade mark
Ö is registered Õ and the sign, Ö if Õ there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association
between the sign and the trade mark;

2. (c)      Any Member State may also provide that the proprietor
shall be entitled to prevent all third parties not having his consent from
using in the course of trade any Ö the Õ sign which is identical with, or similar to, the trade mark Ö irrespective of whether it is used Õ in relation to
goods or services which are ð identical with, similar or ï not similar to those for which the trade mark
is registered, where the latter has a reputation in the Member State and where
use of that sign without due cause takes unfair advantage of, or is detrimental
to, the distinctive character or the repute of the trade mark.

ê 2008/95/EC
(adapted)

3. The following, Ö in
particular Õ inter alia, may be prohibited under paragraphs
1 and 2:

ê 2008/95/EC

(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;

ò new

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

ê 2008/95/EC

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

ò new

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

4. The proprietor of a registered trade mark shall
also be entitled to prevent the importing of goods pursuant to paragraph 3(c)
where only the consignor of the goods acts for commercial purposes.

5. The proprietor of a registered trade mark shall
also be entitled to prevent all third parties from bringing goods, in the
context of commercial activity, into the customs territory of the Member State
where the trade mark is registered without being released for free circulation
there, where such goods, including packaging, come from third countries and
bear without authorization a trade mark which is identical to the trade mark
registered in respect of such goods, or which cannot be distinguished in its
essential aspects from that trade mark.

ê 2008/95/EC

46.
Where, under the law of a Member State, the use of a sign under the conditions
referred to in paragraph 21, point (b) or (c)paragraph 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 rights conferred by the trade mark may not be relied on to
prevent the continued use of the sign.

57.
Paragraphs 1,2,3 and 6 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 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.

ò new

Article 11

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

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

(a)          affixing
in the course of trade a sign identical with or similar to the trade mark on get-up,
packaging or other means on which the mark may be affixed;

(b)          offering
or placing on the market, or stocking for those purposes, or importing or
exporting get-up, packaging or other means on 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 gives
the impression that it constitutes the generic name of the goods or services
for which the trade mark is registered, the publisher of the work shall, at the
request of the proprietor of the trade mark, ensure that the reproduction of
the trade mark at the latest in the next edition of the publication is
accompanied by an indication that it is a registered trade mark.

Article 13

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

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

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

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

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

ê 2008/95/EC

Article 614

Limitation of the effects of a
trade mark

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

ê 2008/95/EC
(adapted)

ð new

(a) his own Ö personal Õ name or
address;

(b) ð signs or ï indications ð which are not distinctive or
which ï concerning 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 ð for the purpose of identifying or
referring to goods or services as those of the proprietor of the trade mark, in
particular ï where it Ö the use
of the trade mark Õ is necessary
to indicate the intended purpose of a product or service, in particular as accessories
or spare parts;.

provided he uses them Ö The first
subparagraph shall only apply where the use made by the third party is Õ in accordance
with honest practices in industrial or commercial matters.

ò new

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

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

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

ê 2008/95/EC

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

Article 715

Exhaustion of the rights conferred
by a trade mark

ê 2008/95/EC
(adapted)

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

ê 2008/95/EC

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

ê 2008/95/EC
(adapted)

Article 1016

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 registered, or if such use
has been suspended during an uninterrupted period of five years, the trade mark
shall be subject to the Ö limits and Õ sanctions
provided for in Ö Article
17, Article 19(1), Article 46(1), and Article 48(3) and (4) Õ this Directive,
unless there are proper reasons for non-use.

ò new

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

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

ê 2008/95/EC

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

ê 2008/95/EC

ð new

(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 ð , regardless of whether or not the
trade mark in the form as used is also registered in the name of the
proprietor ï ;

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

25. Use
of the trade mark with the consent of the proprietor or by any
person who has authority to use a collective mark or a guarantee or
certification mark shall be deemed to constitute
use by the proprietor.

3. In relation to trade marks registered before the
date of entry into force in the Member State concerned of the provisions
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 mentioned in the first subparagraph of
paragraph 1 shall be deemed to have 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 the earliest.

ò new

Article 17

Non-use
as defence in infringement proceedings

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

Article 18

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

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

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

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

ê 2008/95/EC

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
ground that there is an earlier conflicting trade mark if the latter does not
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 earlier
conflicting trade mark if the latter does not fulfil the requirements of use
set out in Article 10(1) and (2) or in Article 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 may 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
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 to be
registered in respect only of that part of the goods or services.

ê 2008/95/EC
(adapted)

Section 4

Ö revocation of trade mark rights Õ

Article 1219

Ö Absence
of genuine use as Õ Ggrounds for
revocation

ê 2008/95/EC

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

ê 2008/95/EC
(adapted)

2. However, nNo
person may claim that the proprietor’s rights in a trade mark should be revoked
where, during the interval between expiry of the five-year period and filing of
the application for revocation, genuine use of the trade mark has been started
or resumed.

ê 2008/95/EC

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

ê 2008/95/EC
(adapted)

Article
20

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

2. Without prejudice
to paragraph 1, a A
trade mark shall be liable to revocation if, after the date on which it was
registered:

ê 2008/95/EC

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

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

Article 1321

ê 2008/95/EC
(adapted)

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

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

ò new

Section 5

Trade marks as
objects of property

Article 22

Transfer
of registered trade marks

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

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

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

4. On request of one
of the parties a transfer shall be entered in the register and published.

5. As long as the
transfer has not been entered in the register, the successor in title may not
invoke the rights arising from the registration of the trade mark against third
parties.

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

Article 23

Rights in
rem

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

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

Article 24

Levy of
execution

1. A trade mark may
be levied in execution.

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

Article 25

Insolvency
proceedings

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

ê 2008/95/EC

Article 826

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.

ò new

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

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

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

Article 27

The
application for a trade mark as an object of property

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

Section 6

Guarantee
marks, certification marks and collective marks

Article 28

Definitions

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

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

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

ê 2008/95/EC
(adapted)

Article 1529

Special
provisions in respect of collective marks, gGuarantee marks and certification marks

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

12. Without prejudice to Article 4, Member States whose
laws authorise the registration of collective marks or of guarantee or
certification marks may provide that such Ö guarantee
or certification Õ marks shall
not be registered, or shall be revoked or declared invalid, on grounds additional to Ö other
than Õ those
specified in Articles 3 Ö ,19 Õ and 12 20 where
the function of those marks so requires.

23. By way of derogation from Article 3(1)(c),
Member States may provide that Ö A
guarantee or certification mark consisting of Õ signs or indications
which may serve, in trade, to designate the geographical origin of the goods or
services may constitute
collective, guarantee or certification marks. Such a mark does Ö shall Õ not entitle
the proprietor to prohibit a third party from using in the course of trade such
signs or indications, provided he uses them in accordance with honest practices
in industrial or commercial matters;. iIn particular, such a mark may not be invoked
against a third party who is entitled to use a geographical name.

Article
30

Ö Collective
marks Õ

ò new

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

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

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

ê 2008/95/EC
(adapted)

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

ò new

Article 31

Regulations
governing use of the collective mark

1. An applicant for
a collective mark shall submit the regulations governing its use.

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

Article 32

Refusal of
the application

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

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

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

Article 33

Use of
collective marks

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

Article 34

Amendment to
the regulations governing use of the collective mark

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

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

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

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

Article 35

Persons who
are entitled to bring an action for infringement

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

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

Article 36

Additional
grounds for revocation

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

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

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

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

Article 37

Additional
grounds for invalidity

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

Chapter 3

Procedures

Section 1

Application
and registration

Article 38

Conditions
with which applications must comply

1. An application
for registration of a trade mark shall contain:

(a)          a request
for the registration,

(b)          information
identifying the applicant,

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

(d)          a
representation of the trade mark.

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

Article 39

Date of
filing

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

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

Article 40

Designation
and classification of goods and services

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

2. The goods and
services for which the protection is sought shall be identified by the
applicant with sufficient clarity and precision to enable the competent
authorities and economic operators, on that sole basis, to determine the extent
of the protection sought. The list of goods and services shall allow each item
to be classified in only one class of the Nice Classification. 3. For the
purposes of paragraph 2, the general indications included in the class headings
of the Nice Classification or other general terms may be used, provided that they comply with the requisite standards of
clarity and precision.

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

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

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

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

Article 41

Ex
officio examination

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

Article 42

Observations
by third parties

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

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

Article 43

Division
of applications and registrations

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

Article 44

Fees

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

Section 2

Procedures for
opposition, revocation and invalidity

Article 45

Opposition
procedure

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

2. The
administrative procedure referred to in paragraph 1 shall provide that at least
the proprietor of an earlier right referred to in Article 5(2) and (3) shall be
able to file a notice of opposition.

3. The parties
shall be granted a period of time of at least two months before the opposition
proceedings commence in order to negotiate the possibility of an amicable
settlement between the opposing party and the applicant.

Article 46

Non-use
as defence in opposition proceedings

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

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

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

Article 47

Procedure
for revocation or declaration of invalidity

1. Member States
shall provide for an administrative procedure before their offices for
revocation or declaration of invalidity of a trade mark.

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

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

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

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

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

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

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

Article 48

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

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

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

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

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

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

Article 49

Consequences
of revocation and invalidity

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

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

Section 3

Duration and
renewal of registration

Article 50

Duration of
registration

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

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

Article 51

Renewal

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

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

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

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

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

Chapter 4

Administrative
cooperation

Article 52

Cooperation
in the area of trade mark registration and administration

Member States
shall ensure that the offices cooperate with each other and with the Agency in
order to promote convergence of practices and tools and achieve coherent
results in the examination and registration of trade marks.

Article 53

Cooperation
in other areas

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

Chapter 5

Final
provisions

ê

Article 54

Transposition

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

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

ê 2008/95/EC
(adapted)

Article
16

Communication

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

Article 1755

Repeal

Directive 89/104/EEC Ö 2008/95/EC Õ , as amended by the Decision listed in Annex I,
Part A, is repealed Ö with effect from [day after the
date set out in the first subparagraph of Article 54(1) of this Directive] Õ , without
prejudice to the obligations of the Member States relating to the time limit
for Ö the Õ transposition into
national law of that Ö the Õ Directive, set out in Annex I, Part B of Annex I to Directive 2008/95/EC.

ê 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 II.

Article 1856

Entry into force

ê 2008/95/EC
(adapted)

This Directive shall enter into force on
the Ö twentieth Õ 20th day
following Ö that of Õ its
publication in the Official Journal of the European Union.

ê

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

ê 2008/95/EC

Article 1957

Addressees

This Directive is addressed to the Member
States.

Done at Brussels,

For the European Parliament                       For
the Council

The President                                                 The
President

ê 2008/95/EC
(adapted)

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 1992

ê 2008/95/EC (adapted)

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 II

é

ANNEX

Correlation Table

Directive 2008/95/EC || This Directive

Article 1 || Article 1

--- || Article 2

Article 2 || Article 3

Article 3(1)(a) to (h) || Article 4(1)(a) to (h)

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

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

Article 3(2)(a) to (c) || Article 4(4)(a) to (c)

Article 3(2)(d) Article 3(3), first sentence Article 3(3), second sentence Article 4(1) and (2) Article 4(3) and (4)(a) --- Article 4(4)(g) --- Article 4(4)(b) and (c) Article 4(4)(d) to (f) Article 4(5) and (6) --- Article 5(1), first introductory sentence Article 5(1), second introductory sentence Article 5(1)(a) and (b) Article 5(2) Article 5(3)(a) to (c) --- Article 5(3)(d) --- --- Article 5(4) and (5) --- --- --- Article 6(1)(a) to (c) --- Article 6(2) Article 7 Article 8(1) and (2) --- Article 9 Article 10(1), first subparagraph --- Article 10(1), second subparagraph Article 10(2) Article 10(3) Article 11(1) Article 11(2) Article 11(3) Article 11(4) --- Article 12(1), first subparagraph Article 12(1), second subparagraph Article 12(1), third subparagraph Article 12(2) Article 13 Article 14 --- --- --- Article 15(1) Article 15(2) --- Article 16 Article 17 Article 18 Article 19 || Article 4(3), second sentence Article 4(5) Article 4(6) Article 5(1) and (2) Article 5(3)(a) Article 5(3)(b) Article 5(3)(c) Article 5(3)(d) Article 5(4)(a) and (b) --- Article 5(5) and (6) Article 8 Article 10(1) Article 10(2), introductory sentence Article 10(2)(a) and (b) Article 10(2) Article 10(3)(a) to (c) Article 10(3)(d) Article 10(3)(e) Article 10(3)(f) Article 10(4) and (5) Article 10(6) and (7) Article 11 Article 12 Article 13 Article 14(1)(a) to (c) Article 14(2) Article 14(3) Article 15 Article 26(1) and (2) Article 26(3) to (5) Article 9 Article 16(1) Article 16(2) and (3) Article 10(4) Article 10(5) --- Article 48(1) to (3) Article 46(1) Article 17 Articles 17, 46(2) and Article 48(4) Article 18 Article 19(1) Article 19(2) Article 19(3) Article 20 Article 7 and Article 21 Article 6 Articles 22 to 25 Article 27 Article 28 29(1) and (2) Article 29(3) Articles 30 to 54(1) Article 54(2) Article 55 Article 56 Article 57

_____________

[1]               Competitiveness Council Conclusions of 21 and 22 May
2007, Council document 9427/07.

[2]               Communication from the Commission to the Council, the
European Parliament, the European Economic and Social Committee and the
Committee of the Regions, COM(2008) 394 final of 26 June 2008.

[3]               COM(2008) 465 final of 16 July 2008.

[4]               COM(2010) 546 final of 6 October 2010.

[5]               COM(2011) 287 final of 24 May
2011, A Single Market for Intellectual Property Rights:
Boosting creativity and innovation to provide economic growth, high quality
jobs and first class products and services in Europe.

[6]               See the final MPI study, including annexes, at
http://ec.europa.eu/internal_market/indprop/tm/index_en.htm.

[7]               Competitiveness Council Conclusions of 25 May 2010 on
the future revision of the Trade Mark system in the EU.

[8]               OJ L 336, 23.12.1994, p. 213.

[9]               Opinion of AG Jääskinen in Case C-323/09, Interflora,
para. 9    .

[10]             Judgment of 11 September 2007, Case C-17/06, Céline,
ECR I-07041.

[11]             OJ L 376, 27.12.2006, p. 21.

[12]             Judgment of 1 December 2011, Cases C-446/09 Philips
and C-495/09 Nokia.

[13]             Joint statements by the Council and the Commission of
the European Communities entered in the minutes of the Council meeting, on the
first Council Directive approximating the laws of the Member States on trade
marks adopted on 21 December 1998.

[14]             Notably Regulation (EC) No 510/2006 (agricultural
products), OJ L 93, 31.3.2008, p.12; Regulation (EC) No 479/2008 (wines), OJ L
148, 6.6.2008, p. 1; and Regulation (EC) No 110/2008 (spirits), OJ L 39,
13.2.2008, p. 16.

[15]             Judgment of 19 June 2012, Case C-307/10, ‘IP
Translator’.

[16]               OJ C [...], [...], p. [...].

[17]               OJ L 40 299, 11.2.1989
8.11.2008, p. 1 25.

[18]               See
Annex I, Part A.

[19]               OJ L 78, 24.3.2009, p.1.

[20]               COM(2008) 465.

[21]               OJ c 140, 29.5.2010, p. 22.

[22]               COM(2011) 287.

[23]               OJ L 336, 23.12.1994, p. 213.

[24]               OJ L 376, 27.12.2006, p. 21.

[25]             OJ L 11, 14.1.1994, p. 1.