1989L0104 — EN — 23.12.1991 — 001.001 — 1
This document is meant purely as a documentation tool and the institutions do not assume any liability for its contents
►B FIRST COUNCIL DIRECTIVE
of 21 December 1988
to approximate the laws of the Member States relating to trade marks
(89/104/EEC)
(OJ L 40, 11.2.1989, p. 1)
Amended by:
Official Journal
No page date
►M1Council Decision 92/10/EEC of 19 December 1991 L 6 35 11.1.1992
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▼B
FIRST COUNCIL DIRECTIVE
of 21 December 1988
to approximate the laws of the Member States relating to trade
marks
(89/104/EEC)
THE COUNCIL OF THE EUROPEAN COMMUNITIES,
Having regard to the Treaty establishing the European Economic
Community, and in particular Article 100a thereof,
Having regard to the proposal from the Commission(1),
In cooperation with the European Parliament(2),
Having regard to the opinion of the Economic and Social Committee(3),
Whereas the trade mark laws at present applicable in the Member States
contain disparities which may impede the free movement of goods andfreedom to provide services and may distort competition within thecommon market; whereas it is therefore necessary, in view of theestablishment and functioning of the internal market, to approximate thelaws of Member States;
Whereas it is important not to disregard the solutions and advantages
which the Community trade mark system may afford to undertakingswishing to acquire trade marks;
Whereas it does not appear to be necessary at present to undertake
full-scale approximation of the trade mark laws of the Member Statesand it will be sufficient if approximation is limited to those nationalprovisions of law which most directly affect the functioning of theinternal market;
Whereas the Directive does not deprive the Member States of the right
to continue to protect trade marks acquired through use but takes theminto account only in regard to the relationship between them and trademarks acquired by registration;
Whereas Member States also remain free to fix the provisions of proce-
dure concerning the registration, the revocation and the invalidity oftrade marks acquired by registration; whereas they can, for example,determine the form of trade mark registration and invalidity procedures,decide whether earlier rights should be invoked either in the registrationprocedure or in the invalidity procedure or in both and, if they allowearlier rights to be invoked in the registration procedure, have anopposition procedure or an ex officio examination procedure or both;
whereas Member States remain free to determine the effects of revoca-tion or invalidity of trade marks;
Whereas this Directive does 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 orconsumer protection;
Whereas attainment of the objectives at which this approximation of
laws is aiming requires that the conditions for obtaining and continuingto hold a registered trade mark are, in general, identical in all MemberStates; whereas, to this end, it is necessary to list examples of signswhich may constitute a trade mark, provided that such signs are capableof distinguishing the goods or services of one undertaking from those ofother undertakings; whereas the grounds for refusal or invalidityconcerning the trade mark itself, for example, the absence of anydistinctive character, or concerning conflicts between the trade markand earlier rights, are to be listed in an exhaustive manner, even if some
(1) OJ No C 351, 31. 12. 1980, p. 1 and OJ No C 351, 31. 12. 1985, p. 4.
(2) OJ No C 307, 14. 11. 1983, p. 66 and OJ No C 309, 5. 12. 1988.
(3) OJ No C 310, 30. 11. 1981, p. 22.
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of these grounds are listed as an option for the Member States which
will therefore be able to maintain or introduce those grounds in theirlegislation; whereas Member States will be able to maintain or intro-duce into their legislation grounds of refusal or invalidity linked toconditions for obtaining and continuing to hold a trade mark for whichthere is no provision of approximation, concerning, for example, theeligibility for the grant of a trade mark, the renewal of the trade mark orrules on fees, or related to the non-compliance with procedural rules;
Whereas in order to reduce the total number of trade marks registered
and protected in the Community and, consequently, the number ofconflicts which arise between them, it is essential to require that regis-tered trade marks must actually be used or, if not used, be subject torevocation; whereas it is necessary to provide that a trade mark cannotbe invalidated on the basis of the existence of a non-used earlier trademark, while the Member States remain free to apply the same principlein respect of the registration of a trade mark or to provide that a trademark may not be successfully invoked in infringement proceedings if itis established as a result of a plea that the trade mark could be revoked;whereas in all these cases it is up to the Member States to establish theapplicable rules of procedure;
Whereas it is fundamental, in order to facilitate the free circulation of
goods and services, to ensure that henceforth registered trade marksenjoy the same protection under the legal systems of all the MemberStates; whereas this should however not prevent the Member Statesfrom granting at their option extensive protection to those trade markswhich have a reputation;
Whereas the protection afforded by the registered trade mark, the func-
tion of which is in particular to guarantee the trade mark as an indica-tion of origin, is absolute in the case of identity between the mark andthe sign and goods or services; whereas the protection applies also incase of similarity between the mark and the sign and the goods orservices; whereas it is indispensable to give an interpretation of theconcept of similarity in relation to the likelihood of confusion; whereasthe likelihood of confusion, the appreciation of which depends onnumerous elements and, in particular, on the recognition of the trademark on the market, of the association which can be made with the usedor registered sign, of the degree of similarity between the trade markand the sign and between the goods or services identified, constitutesthe specific condition for such protection; whereas the ways in whichlikelihood of confusion may be established, and in particular the onus ofproof, are a matter for national procedural rules which are not preju-diced by the Directive;
Whereas it is important, for reasons of legal certainty and without
inequitably prejudicing the interests of a proprietor of an earlier trademark, to provide that the latter may no longer request a declaration ofinvalidity nor may he oppose the use of a trade mark subsequent to hisown of which he has knowingly tolerated the use for a substantiallength of time, unless the application for the subsequent trade mark wasmade in bad faith;
Whereas all Member States of the Community are bound by the Paris
Convention for the Protection of Industrial Property; whereas it isnecessary that the provisions of this Directive are entirely consistentwith those of the Paris Convention; whereas the obligations of theMember States resulting from this Convention are not affected by thisDirective; whereas, where appropriate, the second subparagraph ofArticle 234 of the Treaty is applicable,
HAS ADOPTED THIS DIRECTIVE:
Article 1
Scope
This Directive shall apply to every trade mark in respect of goods or
services which is the subject of registration or of an application in aMember State for registration as an individual trade mark, a collectivemark or a guarantee or certification mark, or which is the subject of a
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registration or an application for registration in the Benelux Trade Mark
Office or of an international registration having effect in a MemberState.
Article 2
Signs of which a trade mark may consist
A trade mark may consist of any sign capable of being represented
graphically, particularly words, including personal names, designs,letters, numerals, the shape of goods or of their packaging, provided thatsuch signs are capable of distinguishing the goods or services of oneundertaking from those of other undertakings.
Article 3
Grounds for refusal or invalidity
1. The following shall not be registered or if registered shall be liable
to be declared invalid:
(a) signs which cannot constitute a trade mark;
(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 produc-tion of the goods or of rendering of the service, or other characteris-tics of the goods;
(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:
— the shape which results from the nature of the goods themselves,
or
— the shape of goods which is necessary to obtain a technical
result, or
— 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 goodsor service;
(h) trade marks which have not been authorized by the competent
authorities and are to be refused or invalidated pursuant to Article 6terof the Paris Convention for the Protection of Industrial Property,
hereinafter referred to as the ‘Paris Convention'.
2. Any Member State may provide that a trade mark shall not be
registered or, if registered, shall be liable to be declared invalid whereand to the extent that:
(a) the use of that trade mark may be prohibited pursuant to provisions
of law other than trade mark law of the Member State concerned orof the Community;
(b) the trade mark covers a sign of high symbolic value, in particular a
religious symbol;
(c) the trade mark includes badges, emblems and escutcheons other
than those covered by Article 6 terof the Paris Convention and
which are of Public interest, unless the consent of the appropriateauthorities to its registration has been given in conformity with thelegislation of the Member State;
(d) the application for registration of the trade mark was made in bad
faith by the applicant.
3. A trade mark shall not be refused registration or be declared
invalid in accordance with paragraph 1 (b), (c) or (d) if, before the dateof application for registration and following the use which has beenmade of it, it has acquired a distinctive character. Any Member State
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may in addition provide that this provision shall also apply where the
distinctive character was acquired after the date of application forregistration or after the date of registration.
4. Any Member State may provide that, by derogation from the
preceding paragraphs, the grounds of refusal of registration or invalidityin force in that State prior to the date on which the provisions necessaryto comply with this Directive enter into force, shall apply to trade marksfor which application has been made prior to that date.
Article 4
Further grounds for refusal or invalidity concerning conflicts with
earlier rights
1. A trade mark shall not be registered or, if registered, shall be
liable to be declared invalid:
(a) if it is identical with an earlier trade mark, and the goods or services
for which the trade mark is applied for or is registered are identicalwith the goods or services for which the earlier trade mark isprotected
(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 thetrade marks, there exists a likelihood of confusion on the part of thepublic, which includes the likelihood of association with the earliertrade 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 registra-tion of the trade mark, taking account, where appropriate, of thepriorities claimed in respect of those trade marks;
(i) Community trade marks;
(ii) trade marks registered in the Member State or, in the case of
Belgium, Luxembourg or the Netherlands, at the BeneluxTrade Mark Office;
(iii) trade marks registered under international arrangements which
have effect in the Member State;
(b) Community trade marks which validly claim seniority, in accord-
ance with the Regulation on the Community trade mark, from atrade mark referred to in (a) (ii) and (iii), even when the latter trademark has been surrendered or allowed to lapse;
(c) applications for the trade marks referred to in (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 respectof the application for registration of the trade mark, are well knownin a Member State, in the sense in which the words ‘well known'are used in Article 6 bisof the Paris Convention.
3. A trade mark shall furthermore not be registered or, if registered,
shall be liable to be declared invalid if it is identical with, or similar to,an earlier Community trade mark within the meaning of paragraph 2and is to be, or has been, registered for goods or services which are notsimilar to those for which the earlier Community trade mark is regis-tered, where the earlier Community trade mark has a reputation in theCommunity and where the use of the later trade mark without due causewould take unfair advantage of, or be detrimental to, the distinctivecharacter or the repute of the earlier Community trade mark.
4. Any Member State may furthermore provide that a trade mark
shall not be registered or, if registered, shall be liable to be declaredinvalid where, and to the extent that:
(a) the trade mark is identical with, or similar to, an earlier national
trade mark within the meaning of paragraph 2 and is to be, or hasbeen, registered for goods or services which are not similar to thosefor which the earlier trade mark is registered, where the earlier trademark has a reputation in the Member State concerned and where the
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use of the later trade mark without due cause would take unfair
advantage of, or be detrimental to, the distinctive character or therepute of the earlier trade mark;
(b) rights to a non-registered trade mark or to another sign used in the
course of trade were acquired prior to the date of application forregistration of the subsequent trade mark, or the date of the priorityclaimed for the application for registration of the subsequent trademark and that non-registered trade mark or other sign confers on itsproprietor the right to prohibit the use of a subsequent trade mark;
(c) the use of the trade mark may be prohibited by virtue of an earlier
right other than the rights referred to in paragraphs 2 and 4 (b) andin 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 amaximum 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 periodpreceding application the length of which is fixed by the MemberState;
(f) the trade mark is identical with, or similar to, an earlier trade mark
which was registered for identical or similar goods or services andconferred on them a right which has expired for failure to renewwithin a period of a maximum of two years preceding application,unless the proprietor of the earlier trade mark gave his agreementfor 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 inuse there, provided that at the date of the application the applicantwas 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 declaredinvalid where the proprietor of the earlier trade mark or other earlierright consents to the registration of the later trade mark.
6. Any Member State may provide that, by derogation from para-
graphs 1 to 5, the grounds for refusal of registration or invalidity inforce in that State prior to the date on which the provisions necessary tocomply with this Directive enter into force, shall apply to trade marksfor which application has been made prior to that date.
Article 5
Rights conferred by a trade mark
1. The registered trade mark shall confer on the proprietor exclusive
rights therein. The proprietor shall be entitled to prevent all third partiesnot having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods
or services which are identical with those for which the trade markis registered;
(b) any sign where, because of its identity with, or similarity to, the
trade mark and the identity or similarity of the goods or servicescovered by the trade mark and the sign, there exists a likelihood ofconfusion on the part of the public, which includes the likelihood ofassociation between the sign and the trade mark.
2. Any Member State may also provide that the proprietor shall be
entitled to prevent all third parties not having his consent from using inthe course of trade any sign which is identical with, or similar to, thetrade mark in relation to goods or services which are not similar tothose for which the trade mark is registered, where the latter has areputation in the Member State and where use of that sign without due
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cause takes unfair advantage of, or is detrimental to, the distinctivecharacter or the repute of the trade mark.
3. The following, inter alia , may be prohibited under paragraphs 1
and 2:
(a) affixing the sign to the goods or to the packaging thereof;
(b) offering the goods, or putting them on the market or stocking them
for these purposes under that sign, or offering or supplying servicesthereunder;
(c) importing or exporting the goods under the sign;
(d) using the sign on business papers and in advertising.
4. Where, under the law of the Member State, the use of a sign under
the conditions referred to in 1 (b) or 2 could not be prohibited beforethe date on which the provisions necessary to comply with thisDirective entered into force in the Member State concerned, the rightsconferred by the trade mark may not be relied on to prevent thecontinued use of the sign.
5. Paragraphs 1 to 4 shall not affect provisions in any Member State
relating to the protection against the use of a sign other than for thepurposes of distinguishing goods or services, where use of that signwithout due cause takes unfair advantage of, or is detrimental to, thedistinctive character or the repute of the trade mark.
Article 6
Limitation of the effects of a trade mark
1. The trade mark shall not entitle the proprietor to prohibit a third
party from using, in the course of trade,
(a) his own name or address;
(b) indications concerning the kind, quality, quantity, intended purpose,
value, geographical origin, the time of production of goods or ofrendering of the service, or other characteristics of goods orservices;
(c) the trade mark where it is necessary to indicate the intended
purpose of a product or service, in particular as accessories or spareparts;
provided he uses them in accordance with honest practices in industrial
or commercial matters.
2. The trade mark shall not entitle the proprietor to prohibit a third
party from using, in the course of trade, an earlier right which onlyapplies in a particular locality if that right is recognized by the laws ofthe Member State in question and within the limits of the territory inwhich it is recognized.
Article 7
Exhaustion of the rights conferred by a trade mark
1. The trade mark shall not entitle the proprietor to prohibit its use in
relation to goods which have been put on the market in the Communityunder that trade mark by the proprietor or with his consent.
2. Paragraph 1 shall not apply where there exist legitimate reasons
for the proprietor to oppose further commercialization of the goods,especially where the condition of the goods is changed or impaired afterthey have been put on the market.
Article 8
Licensing
1. A trade mark may be licensed for some or all of the goods or
services for which it is registered and for the whole or part of theMember State concerned. A license may be exclusive or non-exclusive.
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2. The proprietor of a trade mark may invoke the rights conferred bythat trade mark against a licensee who contravenes any provision in hislicensing contract with regard to its duration, the form covered by theregistration in which the trade mark may be used, the scope of thegoods or services for which the licence is granted, the territory in whichthe trade mark may be affixed, or the quality of the goods manufacturedor of the services provided by the licensee.
Article 9
Limitation in consequence of acquiescence
1. Where, in a Member State, the proprietor of an earlier trade mark
as referred to in Article 4 (2) has acquiesced, for a period of fivesuccessive years, in the use of a later trade mark registered in thatMember State while being aware of such use, he shall no longer beentitled on the basis of the earlier trade mark either to apply for adeclaration that the later trade mark is invalid or to oppose the use ofthe later trade mark in respect of the goods or services for which thelater trade mark has been used, unless registration of the later trademark 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 other earlier right referred to in Article 4 (4) (b)or (c).
3. In the cases referred to in paragraphs 1 and 2, the proprietor of a
later registered trade mark shall not be entitled to oppose the use of theearlier right, even though that right may no longer be invoked againstthe later trade mark.
Article 10
Use of trade marks
1. If, within a period of five years following the date of the comple-
tion of the registration procedure, the proprietor has not put the trademark to genuine use in the Member State in connection with the goodsor services in respect of which it is registered, or if such use has beensuspended during an uninterrupted period of five years, the trade markshall be subject to the sanctions provided for in this Directive, unlessthere are proper reasons for non-use.
2. The following shall also constitute use within the meaning of
paragraph 1:
(a) use of the trade mark in a form differing in elements which do not
alter the distinctive character of the mark in the form in which itwas registered;
(b) affixing of the trade mark to goods or to the packaging thereof in
the Member State concerned solely for export purposes.
3. 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 orcertification mark shall be deemed to constitute use by the proprietor.
4. In relation to trade marks registered before the date on which the
provisions necessary to comply with this Directive enter into force inthe Member State concerned:
(a) where a provision in force prior to that date attaches sanctions to
non-use of a trade mark during an uninterrupted period, the relevantperiod of five years mentioned in paragraph 1 shall be deemed tohave begun to run at the same time as any period of non-use whichis already running at that date;
(b) where there is no use provision in force prior to that date, the
periods of five years mentioned in paragraph 1 shall be deemed torun from that date at the earliest.
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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 therequirements of use set out in Article 10 (1), (2) and (3) or in Article 10(4), 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 conflictingtrade mark if the latter does not fulfil the requirements of use set out inArticle 10 (1), (2) and (3) or in Article 10 (4), 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 providethat a trade mark may not be successfully invoked in infringementproceedings if it is established as a result of a plea that the trade markcould 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 ofapplying paragraphs 1, 2 and 3, be deemed to be registered in respectonly of that part of the goods or services.
Article 12
Grounds for revocation
1. A trade mark shall be liable to revocation if, within a continous
period of five years, it has not been put to genuine use in the MemberState in connection with the goods or services in respect of which it isregistered, and there are no proper reasons for non-use; however, noperson may claim that the proprietor’s rights in a trade mark should berevoked where, during the interval between expiry of the five-yearperiod and filing of the application for revocation, genuine use of thetrade mark has been started or resumed; the commencement or resump-tion of use within a period of three months preceding the filing of theapplication for revocation which began at the earliest on expiry of thecontinuous period of five years of non-use, shall, however, be disre-garded where preparations for the commencement or resumption occuronly after the proprietor becomes aware that the application for revoca-tion may be filed.
2. A trade mark shall also be liable to revocation if, after the date on
which it was registered,
(a) in consequence of acts or inactivity of the proprietor, it has become
the common name in the trade for a product or service in respect ofwhich 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 forwhich it is registered, it is liable to mislead the public, particularlyas to the nature, quality or geographical origin of those goods orservices.
Article 13
Grounds for refusal or revocation or invalidity relating to only
some of the goods or services
Where grounds for refusal of registration or for revocation or invalidity
of a trade mark exist in respect of only some of the goods or servicesfor which that trade mark has been applied for or registered, refusal ofregistration or revocation or invalidity shall cover those goods orservices only.
Article 14
Establishment a posteriori of invalidity or revocation of a trade
mark
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Where the seniority of an earlier trade mark which has been surrenderedor allowed to lapse, is claimed for a Community trade mark, theinvalidity or revocation of the earlier trade mark may be established a
posteriori .
Article 15
Special provisions in respect of collective marks, guarantee marks
and certification marks
1. Without prejudice to Article 4, Member States whose laws
authorize the registration of collective marks or of guarantee or certi-fication marks may provide that such marks shall not be registered, orshall be revoked or declared invalid, on grounds additional to thosespecified in Articles 3 and 12 where the function of those marks sorequires.
2. By way of derogation from Article 3 (1) (c), Member States may
provide that signs or indications which may serve, in trade, to designatethe geographical origin of the goods or services may constitute collec-tive, guarantee or certification marks. Such a mark does not entitle theproprietor to prohibit a third party from using in the course of tradesuch signs or indications, provided he uses them in accordance withhonest practices in industrial or commercial matters; in particular, sucha mark may not be invoked against a third party who is entitled to use ageographical name.
Article 16
National provisions to be adopted pursuant to this Directive
1. The Member States shall bring into force the laws, regulations and
administrative provisions necessary to comply with this Directive notlater than ►
M131 December 1992 ◄. They shall immediately inform
the Commission thereof.
2. Acting on a proposal from the Commission, the Council, acting by
qualified majority, may defer the date referred to in paragraph 1 until 31December 1992 at the latest.
3. Member States shall communicate to the Commission the text of
the main provisions of national law which they adopt in the fieldgoverned by this Directive.
Article 17
Addressees
This Directive is addressed to the Member States.