31. 12. 80 Official Journal of the European Communities No C 351/1 
II 
(Preparatory Acts) 
COMMISSION 
Proposal for a first Council Directive to approximate the laws of the Member States 
relating to trade marks 
(Submitted by the Commission to the Council on 25 November 1980) 
THE COUNCIL OF THE EUROPEAN 
COMMUNITIES, 
Having regard to the Treaty establishing the 
European Economic Community, and in particular 
Article 100 thereof, 
Having regard to the proposal from the 
Commission, 
Having regard to the opinion of the European 
Parliament, 
Having regard to the opinion of the Economic and 
Social Committee, 
Whereas: 
the trade marks laws at present applicable in the 
Member States contain disparities which may 
impede the free movement of goods and freedom to 
provide services, may distort competition within the 
common market and may therefore directly affect the 
establishment and functioning of that market; 
it does not appear to be necessary at present to 
undertake full-scale harmonization of the trade 
marks laws of the Member States. It will be sufficient 
if approximation is limited to those national 
provisions of law which most directly affect free 
movement of goods and services. It follows that this 
directive does not deprive Member States of the right 
to continue to protect trade marks acquired through 
use but takes them into account only in regard to the 
relationship between them and trade marks acquired 
by registration, the only marks which it covers. It is, further, important not to disregard the solutions and 
advantages which the Community trade mark system 
affords to undertakings wishing to acquire trade 
marks. Under this system there is no point in 
requiring the Member States, inter alia, to authorize 
the registration of additional categories of signs or to 
recognize service marks. For the same reason, there is 
no justification for increasing the protection of 
marks which enjoy a particular reputation; 
this Directive excludes the application to trade marks 
of other rules of law of the Member States, such as 
the provisions relating to fair competition. Moreover, 
as it only partially approximates the laws of the 
Member States, Article 36 of the Treaty continues to 
apply; 
attainment of the objectives at which this 
approximation of laws is aiming requires that the 
conditions for obtaining and continuing to hold a 
trade mark are, in general, identical in all Member 
States; 
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 that the trade marks be 
actually used; 
the principal purpose of the directive is to ensure that 
henceforth trade marks enjoy uniform protection 
under the legal systems of all the Member States; 
the protection afforded by the trade marks is bound 
up with the concept of similarity of signs, similarity 
No C 351/2 Official Journal of the European Communities 31. 12. 80 
of goods and services and the possibility of confusion 
arising therefrom. The purpose of protection is to 
guarantee the trade mark's function as an indicator 
of origin. It is essential to give strict interpretation to 
the abovementioned concepts so as not to impede the 
free movement of goods and the freedom to provide 
services beyond the limits required for the protection 
of trade marks. The current case-law in several of the 
Member States affords to trade marks a degree of 
protection which is to some extent inconsistent with 
the specific purpose of trade marks law. The directive 
therefore requires that the case-law be examined. It is 
necessary, in particular, that by simultaneous 
comparison of signs, goods and services it be certain 
in each case that customers are likely to be confused 
as to the goods or services which are identified by the 
signs. Where a trade mark consists of several 
elements it must be considered in its entirety in 
determining whether the sign which is alleged to 
infringe it is so similar to it that the sign may be 
confused with the trade mark. It is no longer possible, 
in determining whether, in a particular Member 
State, two verbal signs are homophones or are, at any 
rate, phonetically similar, to disregard the existence 
of the Community and the fact that the public is 
increasingly aware of the correct pronunciation of 
words in the languages which are spoken therein; 
the function of indicating origin which is fulfilled by 
a trade mark implies that it is not, in principle, 
possible to prohibit its use by a third party in respect 
of goods marketed within or outside the Community 
under the trade mark by the proprietor or with his 
consent, or to prohibit its use, for reasons based on 
trade mark law, by a licensee supplying goods or 
providing services under the trade mark outside the 
territory covered by the licence. 
Whereas it is necessary for the functioning of the 
common market to approximate national procedural 
rules only insofar as this will contribute to the 
settlement of disputes between the proprietors of 
trade marks or between the latter and holders of 
other private rights; whereas, for the present, 
provision is made for an amicable settlement 
procedure only; whereas it may, however, be proper 
at some later stage, depending in particular on the 
degree of integration then achieved by the 
Community, to contemplate new measures which 
would enable such conflicts to be resolved more 
easily. 
HAS ADOPTED THIS DIRECTIVE: 
Article 1 
This Directive applies to every trade mark in respect 
of goods or services which is the subject of an 
application in a Member State for registration as an 
individual trade mark, a collective mark or a 
guarantee mark, or which is the subject of an 
international registration having effect in a Member 
State. Article 2 
1. Trade marks shall be refused registration or shall 
be invalidated if, on the date of application therefor, 
they consist of signs which, under the law of the 
Member State concerned, cannot constitute a trade 
mark or be held as such by the applicant, or if, on that 
date, are devoid of distinctive character in a Member 
State, and in particular: 
(a) those which consist solely of signs or indications 
which in trade may be requisite for the purpose 
of showing the kind, quality, quantity, intended 
purpose, value, geographical origin, the time of 
production of the goods or of rendering of the 
service or other characteristics of the goods or 
service, unless those marks have acquired 
distinctive character in consequence of the use 
made of them; 
(b) those which consist solely of signs or indications 
which are customarily used to designate the 
goods or service in the current language of the 
trade or in the bona fide and established 
practices thereof. 
2. Trade marks shall also be refused registration or 
shall be invalidated if, on the date of application 
therefor, 
(a) they consist of a shape which is determined by 
the nature of the goods or which has some 
technical consequence, or they consist of the 
shape of the goods and this affects their intrinsic 
value, to the extent that, in the Member State 
concerned, a shape may constitute a trade 
mark; 
(b) they include signs or indications liable to 
mislead the public, particularly as to the nature, 
quality or geographical origin of the goods or 
services; 
(c) they are contrary to public order or to accepted 
principles of morality or are covered by Article 6 
ter of the Paris Convention for the Protection of 
Industrial Property, hereinafter referred to as 
the 'Paris Convention'. 
3. A trade mark shall also be invalidated where the 
goods for which it is registered in the Member State 
concerned has been marketed in another Member 
State under another trade mark by the proprietor or 
with his consent, unless there are legitimate grounds 
which justify the use of different marks for those 
goods in those Member States; but this provision 
shall not apply if the proprietor decides to surrender, 
in respect of the goods in question, the trade mark 
that exists in the other Member State and furnishes 
proof, within the period laid down by the authority to 
31. 12. 80 Official Journal of the European Communities No C 351/3 
which the application for invalidation is submitted, 
that the trade mark has been properly surrendered. 
4. Trade marks for which application has been 
made prior to the date laid down in Article 18 (1) or 
which are registered before that date shall be 
invalidated if any of the grounds specified in 
paragraph 1 to 3 apply to them. 
Article 3 
1. The trade mark confers on the proprietor thereof 
an exclusive right. That right entitles him to prohibit 
any third party from using, without his consent, and 
in the course of trade a sign which is identical with or 
similar to the trade mark in relation to goods or 
services identical with or similar to those in respect of 
which application was made, where such use creates 
a serious likelihood of confusion on the part of the 
public; 
2. Where the conditions specified in paragraph 1 
are satisfied, the following types of use, in particular, 
may be prohibited: 
(a) affixing the sign to the goods or to the packaging 
thereof; 
(b) putting the goods on the market under that sign, 
or supplying services thereunder; 
(c) using the sign on business correspondence or 
invoices. 
3. The Member States shall determine under what 
conditions compensation may be obtained for loss or 
damage caused by the acts mentioned in 
paragraph 1, and the rules of procedure which are to 
apply. 
Article 4 
1. The publisher of a dictionary, encyclopaedia or 
similar work shall ensure that any reproduction of a 
trade mark therein is accompanied by an indication 
that an application has been made for registration of 
the trade mark. 
2. Where the publisher fails to comply with the 
requirements of paragraph (1) he shall, at the request 
of the proprietor of the trade mark, correct the matter 
at his own expense in the next edition of the 
publication. 
Article 5 
The trade mark shall not entitle the proprietor 
thereof to prohibit a third party from using, in the 
course of trade: 
(a) his surname or address; 
(b) indications concerning the kind, quality, 
quantity, intended purpose, value, geographical origin, the time of production of the goods or of 
rendering of the service or other characteristics 
of the goods or service; 
(c) the trade mark for the purpose of indicating the 
intended purpose of accessories or spare parts, 
provided he does not use them as a trade mark. 
Article 6 
1. The trade mark shall not entitle the proprietor 
thereof to prohibit its use in relating to goods which 
have been put on the market under that trade mark 
by the proprietor or with his consent. 
2. Paragraph (1) shall not apply: 
(a) where there are legitimate grounds for opposing 
imporation into the Community of goods put on 
the market outside it; 
(b) where the condition of the goods is changed or 
impaired after they have been put on the 
market; 
(c) where the goods are repackaged by a third 
party. 
Article 7 
The trade mark may be invoked against a licensee 
only if he contravenes a limitation with regard to a 
part of the goods or services in respect of which 
application has been made for registration of the 
trade mark, or contravenes the proprietor's 
instructions concerning the quality of the goods or 
services. 
Article 8 
1. A trade mark shall be refused registration or shall 
be invalidated: 
(a) on the ground that an earlier trade mark exists 
where those marks are likely to create confusion 
within the meaning of Article 3 (1); 
(b) on the ground that some other exclusive prior 
right exists, where there is a serious likelihood of 
confusion on the part of the public between the 
trade mark and that right, unless the latter is a 
portrait, a surname or a work protected by 
copyright or by an industrial design or model. 
2. Paragraph (1) (b) shall also apply to prohibition 
of the use of a trade mark based on the existence of 
another exclusive prior right. 
No C 351/4 Official Journal of the European Communities 31. 12. 80 
Article 9 
1. Where, in the course of proceedings to oppose 
registration of a trade mark or to invalidate a trade 
mark or to prohibit the use of a trade mark, the 
authority seised of the matter considers that the 
conflict between that trade mark and another trade 
mark or other right is capable of being resolved 
amicably, it shall submit proposals to the parties for 
the purpose of imposing conditions on the use of the 
trade mark or of the other right in such manner that 
there will be no serious likelihood of confusion on 
the part of the public. 
2. Where the proprietor of the trade mark or of the 
other right is not party to the proceedings, the 
authority seised of the matter may order that he be 
summoned. 
Article 10 
1. Where the proprietor of a trade mark or other 
exclusive right has for three consecutive years 
acquiesced in the use in a Member State of a later 
trade mark which is likely to create confusion with 
his trade mark or right, he shall not be entitled to 
apply for invalidation of the later trade mark or 
cause its use to be prohibited in that Member State or 
in another Member State except where the 
application for the later trade mark was made in bad 
faith. 
2. Paragraph (1) shall be without prejudice to the 
right of the proprietor of a trade mark which is well 
known in a Member State within the meaning of 
Article 6 bis of the Paris Convention to apply for the 
invalidation of a later trade mark or to cause its use to 
be prohibited in that State, within five years after the 
date of registration of the later trade mark. 
Article 11 
1. A trade mark shall be put to serious use in the 
Member State concerned, consistently with the terms 
of this Directive, in connection with the goods or 
services in respect of which it is registered, unless 
there exist legitimate reasons for not doing so. 
2. Circumstances arising independently of the will 
of the proprietor of a trade mark are alone sufficient 
to constitute legitimate reasons for not using it. 
3. Use of a trade mark by a licensee, by a person 
who is associated economically with the proprietor or 
by a person who is entitled to use a collective mark or 
guarantee mark shall be deemed to constitute use by 
the proprietor. 4. In relation to trade marks for which application 
was made in the Member State concerned before the 
date laid down in Article 18 (1), the provisions of this 
Article shall apply with effect from that date only. 
Article 12 
Where the law of a Member State provides that the 
existence of a trade mark may be averred in 
opposition to the registration of a later trade mark, it 
shall provide that, at the request of the applicant for 
registration or the competent authority, the party 
opposing registration shall furnish proof that the 
earlier trade mark has been used in the manner 
required by Article 11 during the five years preceding 
publication of the application for the later trade 
mark, on condition that on that date the earlier trade 
mark has been registered for not less than five years. 
In the absence of such proof, the opposition shall be 
rejected. Where the earlier trade mark has been used 
only in respect of part of the goods or services for 
which it was registered, it shall, for the purposes of 
examining the opposition, be deemed to be registered 
in respect only of that part of the goods or 
services. 
Article 13 
1. Renewal of registration of a trade mark shall be 
subject to the production of a declaration of user, 
indicating the goods or services in respect of which 
the trade mark has been used in manner required by 
Article 11 during the five years preceding expiry of 
the registration. 
2. Where the declaration of use is produced in 
respect of only part of the goods or services for which 
the trade mark is registered, registration shall be 
renewed only for that part of the goods or services. 
3. The laws of the Member States shall determine 
the procedure for presenting the declaration of user 
and the penalties applicable where a false declaration 
is made. 
Article 14 
1. A trade mark shall be invalidated if it has not 
been used in the manner required by Article 11 for an 
unbroken period of five years; but a trade mark is not 
to be invalidated where, between the expiry of that 
period and the date on which the validity of the trade 
mark is contested, it has been used in good faith and 
in the manner required by Article 11. 
2. A trade mark shall also be invalidated if, after the 
date on which it was registered: 
(a) it has become, in consequence of acts of the 
proprietor, the common name for a product or 
service in respect whereof it is registered; 
31. 12. 80 Official Journal of the European Communities No C 351/5 
(b) it is liable, in consequence of the use made of it 
in respect of the goods or services for which it is 
registered, to mislead the public, particularly as 
to the nature, quality or geographical origin of 
those goods or services. 
Article 15 
Where a ground for refusal of registration or for 
invalidation of a trade mark exists in respect of only 
part of the goods or services for which that mark has 
been applied for or registered, refusal of registration 
or invalidation shall cover only the goods or services 
concerned. 
Article 16 
Without prejudice to Article 8, Member States whose 
laws authorize the registration of collective marks or 
guarantee marks may provide that such marks be 
refused registration, or shall be invalidated, on other 
grounds than those specified in Article 2 and 14 
where the function of those marks so requires. 
THE COUNCIL OF THE EUROPEAN 
COMMUNITIES 
Having regard to the Treaty establishing the 
European Economic Community, and in particular 
Article 235 thereof, 
Having regard to the proposal from the 
Commission, 
Having regard to the opinion of the European 
Parliament, 
Having regard to the opinion of the Economic and 
Social Committee, 
Whereas: 
it is desirable to promote throughout the Community 
a harmonious development of economic activities 
and a continuous and balanced expansion by 
establishing a common market which functions 
properly and offers conditions which are similar to Article 17 
The laws of the Member States shall determine the 
procedure for registration and for invalidation of 
trade marks and the effects of invalidation. They may 
further provide that a trade mark to which one of the 
grounds for invalidation mentioned in this Directive 
applies shall not be capable of defeating the claims of 
third parties. 
Article 18 
1. The Member States shall bring into force the 
laws, regulations and administrative provisions 
necessary to comply with this Directive not later 
than... 
They shall immediately inform the Commission 
thereof. 
2. The Member States shall communicate to the 
Commission the text of the main provisions of 
national law which they adopt in the field governed 
by this Directive. 
Article 19 
This Directive is addressed to the Member States. 
those obtaining in a national market. In order to 
create a market of this kind and make it increasingly 
a single market, not only must the barriers to free 
movement of goods and services be removed and 
arrangements be instituted which ensure that 
competition is not distorted, but, in addition, legal 
conditions must be created which enable 
undertakings to adapt their activities to the scale of 
the Community, whether in manufacturing and 
distributing goods or in providing services. For those 
purposes, trade marks enabling the products and 
services of undertakings to be distinguished by 
identical means troughout the entire Community, 
regardless of frontiers, should feature amongst the 
legal instruments which undertakings have at their 
disposal; 
action by the Community would appear to be 
necessary for the purpose of attaining the 
Community's said objectives. Such action involves 
the creation of Community arrangements for trade 
marks whereby undertakings can by means of one Proposal for a Council Regulation on Community trade marks 
(Submitted by the Commission to the Council on 25 November 1980)