No C 351/4 Official Journal of the European Communities 31. 12. 85 
II 
(Preparatory Acts) 
COMMISSION 
Amended proposal for a first Council Directive to approximate the laws of the Member States 
relating to trade-marks (*) 
COM(85) 793 final 
(Submitted by the Commission to the Council pursuant to the second paragraph of 
Article 149 of the EEC Treaty on 17 December 1985) 
(85/C 351/05) 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
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-mark 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-mark 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. THE COUNCIL OF THE EUROPEAN COMMUNITIES, 
Unchanged 
Having regard to the proposal from the Commission (2), 
Having regard to the opinion of the European Parlia­
ment (3), 
Having regard to the opinion of the Economic and Social 
Committee (4), 
Whereas: 
Unchanged 
It does not appear to be necessary at present to undertake 
full-scale harmonization 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 free movement of goods and services. 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. 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. 
(!) OJ No C 351, 10. 12. 1980, p. 1. (2) OJ No C 351, 31. 12. 1980, p. 1. 
(3) OJ No C 307, 14. 11. 1983, p. 60. 
(4) OJ No C 310, 30. 11. 1981, p. 22. 
31. 12. 85 Official Journal of the European Communities No C 351/5 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
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. This Directive does not exclude 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. 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 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, con­
sequently, the number of conflicts which arise between 
them, it is essential that the trade-marks be actually used. In order to reduce the total number of trade-marks 
registered and protected in the Community and, con­
sequently, the number of conflicts which arise between 
them, it is essential that the registered 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 principal purpose of the Directive is to ensure that 
henceforth registered trade-marks enjoy uniform protec­
tion under the legal systems of all the Member States. 
The protection afforded by the trade-mark is bound up 
with the concept of similarity of signs, similarity 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-mark law. 
The Directive therefore requires that the case law be 
examined. It is necessary, in particular, that by simul­
taneous 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 protection afforded by the registered trade-mark is 
bound up with the concept of similarity of a sign and the 
goods and services in connection with which it is used, to 
the registered trade-mark and the goods or services for 
which it is registered, and with the possibility of confusion 
between the sign and the registered trade-mark. 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 registered trade-marks. The current case law 
in several of the Member States affords to trade-marks 
degrees of protection which may to some extent go beyond 
the specific subject matter of trade-marks. The Directive 
therefore requires that the case law be examined. It is 
necessary, in particular, by simultaneous comparison of the 
sign and the goods or services in connection with which it is 
used and the registered trade-mark and the goods or 
services for which it is registered, to establish clearly in each 
case that customers are likely to be confused as to the sign 
and the goods and services which are identified by the sign 
on the one hand and the registered trade-mark and the 
goods or services for which it is registered on the other. 
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 the registered 
trade-mark that it is clear that the sign is likely to be 
confused with the registered 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. 
No C 351/6 Official Journal of the European Communities 31. 12. 85 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
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. It follows from the principle of free flow of goods that the 
proprietor of a registered trade-mark must not be entitled 
to prohibit its use by a third party in relation to goods 
which have been put on the market in the Community, 
under that trade-mark, by him or with his consent, nor to 
prohibit its use, for reasons based on trade-mark law, by a 
licensee who supplies the goods or services under the trade­
mark outside the territory covered by the licence. 
It is necessary for the functioning of the common market to 
approximate national procedural rules only in so far 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. For the present, provision is 
made for an amicable settlement procedure only. 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. It is necessary for the functioning of the common market to 
approximate national procedural rules only in so far 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. Consequently, provision is 
made for an amicable settlement procedure only. 
HAS ADOPTED THIS DIRECTIVE: HAS ADOPTED THIS DIRECTIVE: 
Article 1 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. This Directive applies 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 
mark, or which is the subject of an international 
registration having effect in a Member State. 
Article 2 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, they are devoid of 
distinctive character in a Member State, and in particular: 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, they are devoid of 
distinctive character in that 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 con­
sequence of the use made of them; (a) Unchanged. 
(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. (b) Unchanged. 
2. Trade-marks shall also be refused registration or shall 
be invalidated if, on the date of application therefor, 2. Trade-marks shall also be refused registration or shall 
be invalidated if, on the date of applicaton therefor, 
31. 12. 85 Official Journal of the European Communities No C 351/7 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
(a) they consist of a shape which is determined by the (a) Unchanged, 
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 (c) 
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 Con­
vention'. (b) they are liable to mislead the public, particularly as to 
the nature, quality or geographical origin of the goods 
or services; 
3. A trade-mark shall also be invalidated where the '. 
goods for which it is registered in the Member State 
concerned have 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 which the application for invalidation is 
submitted, that the trade-mark has been properly sur­
rendered. 
4. Trade-marks for which application has been made 4. Deleted, 
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 paragraphs 1 to 3 apply to them. they are contrary to public policy or to accepted 
principles of morality, or have not been authorized 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'. 
Deleted. 
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, 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. Article 3 
1. The registered trade-mark confers on the proprietor 
exclusive rights therein. The proprietor shall be entitled to 
prohibit any third party from using in the course of trade, 
save with his consent: 
(a) any sign which is identical with the trade-mark in 
relation to goods or services which are identical with 
those for which the trade-mark is registered; 
(b) any sign which is identical with the trade-mark in 
relation to goods or services which are similar to those 
for which the trade-mark is registered, where, because 
of the similarity of the goods or services, such use 
involves a likelihood of confusion between the sign and 
the trade-mark on the part of the public; 
(c) any sign which is similar to the trade-mark in relation 
to goods or services which are identical with or similar 
to those for which the trade-mark is registered, where, 
because of the similarity of the sign and the identity or 
similarity of the goods or services, such use involves a 
likelihood of confusion between the sign and the trade­
mark on the part of the public. 
No C 351/8 Official Journal of the European Communities 31. 12. 85 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
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. 2. Where the conditions specified in paragraph 1 are 
satisfied, the following in particular may be prohibited: 
(a) Unchanged. 
(b) Unchanged. 
(c) Using the sign on business papers. 
3. Unchanged. 
4. Where, under the law of the Member State, the use of 
an identical or similar sign in relation to similar goods 
could not be prohibited before the date referred to in 
Article 18 (1), the rights conferred by the trade-mark may 
not be relied on to prevent the continued use of the sign in 
relation to the goods concerned. 
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 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 the 
trade-mark is registered, where the reproduction of this 
trade-mark in such works gives the impression that it 
constitutes the generic name of the goods or services for 
which the trade-mark is registered. 
2. Unchanged. 
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 5 
The trade-mark shall not entitle the proprietor thereof to 
prohibit a third party from using, in the course of trade, 
(a) his own name and address; 
(b) Unchanged. 
(c) the trade-mark where it is necessary to indicate the 
intended purpose of a product or service, in particular 
accessories or spare parts, 
provided he uses them in accordance with honest industrial 
or commercial practice. 
Article 6 
1. The trade-mark shall not entitle the proprietor 
thereof to prohibit its use in relation to goods which have 
been put on the market under that trade-mark by the 
proprietor or with his consent. Article 6 
1. The trade-mark shall not entitle the proprietor 
thereof to prohibit its use in relation to goods which have 
been put on the market in the Community under that trade­
mark by the proprietor or with his consent. 
31. 12. 85 Official Journal of the European Communities No C 351/9 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
2. Paragraph 1 shall not apply: 
(a) where there are legitimate grounds for opposing 
importation 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. 2. Paragraph 1 shall not apply where the condition of 
the goods is changed or impaired after they have been put 
on the market. 
(a) Deleted. 
(b) Deleted. 
(c) Deleted. 
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 7 
The rights conferred by a trade-mark may be invoked 
against a licensee only if he contravenes the limits on his 
licence with regard to its duration or to the licensed scope 
of the goods or services for which the trade-mark is 
registered or does not comply with the proprietor's 
instructions in respect of 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. Article 8 
1. Unchanged. 
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. (a) if it is identical with an earlier right, and the goods or 
services are identical with those for which the earlier 
right was registered in the cases referred to in 
paragraph 2 (a) or (b), or has been used in the cases 
referred to in paragraph 2 (c) or (d); 
(b) if it is identical with an earlier right, and the goods or 
services are similar to those for which the earlier right 
was registered in the cases referred to in paragraph 2 
(a) or (b) or has been used in the cases referred to in 
paragraph 2 (c) or (d), with the result that there arises a 
likelihood of confusion between the trade-mark 
applied for and the earlier right on the part of the public 
in the territory in which the earlier right has effect; 
(c) if it is similar to an earlier right, and the goods or 
services are identical with or similar to those for which 
the earlier right was registered in the cases referred to in 
paragraph 2 (a) or (b) or has been used in the cases 
referred to in paragraph 2 (c) or (d), with the result that 
there arises a likelihood of confusion between the 
trade-mark applied for and the earlier right on the part 
of the public in the territory in which the earlier right 
has effect. 
2. An 'earlier right' means: 
(a) trade-marks of the following kinds in respect of which 
the date of application for registration preceded the 
date of application for registration of the trade-mark, 
taking account, where appropriate, of the priorities 
claimed in respect of those trade-marks: 
No C 351/10 Official Journal of the European Communities 31. 12. 85 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
— Community trade-marks, 
— trade-marks registered in the Member State, 
— trade-marks registered under international ar­
rangements which have effect in the Member State; 
(b) application for the trade-marks referred to in (a), 
subject to their registration; 
(c) trade-marks which, on the date of application for 
registration of the trade-mark, are well known in the 
Member State, in the sense in which the words 'well 
known' are used in Article 6b of the Paris Convention; 
(d) any signs used in the business world before the 
application for registration of the trade-mark which, 
under the law of the Member State governing them, 
confer on their proprietor the right to prohibit the use 
of subsequent trade-marks; 
(e) any signs containing: 
— the name of a third person, where use of this name 
in relation to the goods or services for which the 
trade-mark is applied for is liable to cause serious 
detriment to the honour, reputation or credit of 
that person, 
— a portrait of a third person, 
— a work of a third person protected by copyright or 
by an industrial model or design, 
so, however, that in any opposition, based on such a 
sign, to the registration of the trade-mark or in 
proceedings to invalidate the trade-mark the likelihood 
of confusion does not need to be established. 
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 seized 
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 
seized of the matter may order that he be summoned. 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 seized 
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 likelihood of confusion on the part of the 
public. 
2. Unchanged. 
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. Article 10 
1. Where, in a Member State, the proprietor of a 
registered trade-mark or of any other earlier right referred 
to in Article 8 (2) (a) to (d) has acquiesced in the use of a 
later registered trade-mark in that Member State for a 
period of three successive years, being aware of such use, he 
shall not be entitled 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 the later 
trade-mark was applied for in bad faith. 
31. 12. 85 Official Journal of the European Communities No C 351/11 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
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. Unchanged. 
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 11 
1. If, within a period of five years following registration, 
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 sanctions provided for in 
this Directive, unless there exist legitimate reasons for non-
use. 
The following shall also constitute use for the purposes 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 it was registered; 
(b) affixing of the trade-mark to products or to packaging 
thereof in the Member State solely for export purposes. 
2. Unchanged. 
3. Use of the trade-mark with the consent of the 
proprietor or by a third party who is entitled to use a 
collective mark or guarantee mark shall be deemed to 
constitute use by the proprietor. 
4. Unchanged. 
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 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, during the period of five years preceding 
the date of publication of the later trade-mark application, 
the earlier trade-mark has been put to genuine use in the 
Member State in connection with the goods or services in 
respect of which it is registered, or that there exist 
legitimate reasons for non-use, provided the earlier trade­
mark has at that date been registered for not less than five 
years. In the absence of proof to this effect, the opposition 
shall be rejected. 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 the examination of the 
opposition, be deemed to be registered in respect only of 
that part. 
No C 351/12 Official Journal of the European Communities 31. 12. 85 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
Article 13 
1. Renewal of registration of a trade-mark shall be 1. Deleted, 
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 a manner required by 
Article 11 during the five years preceding expiry of the 
registration. 
2. Where the declaration of user is produced in respect 2. Deleted, 
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 3. Deleted, 
procedure for presenting the declaration of user and the 
penalties applicable where a false declaration is made. Article 13 
Article 14 Article 14 
1. A trade-mark shall be invalidated if it has not been 
used in a 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 a 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; 
(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. 1. A trade-mark shall be invalidated if, within an 
uninterrupted 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, unless 
there exist legitimate reasons for non-use; but a trade-mark 
shall not be invalidated where, after the expiry of that 
period and before the date on which the validity of the 
trade-mark is contested, use of the trade-mark has been 
started or resumed in good faith. 
2. Unchanged. 
(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) Unchanged. 
Article 15 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. Unchanged. 
Article 16 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 Articles 2 and 14 where the function of those 
marks so requires. Unchanged. 
31. 12. 85 Official Journal of the European Communities No C 351/13 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
Article 17 
The laws of the Member State 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 17 
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. Unchanged. 
Article 17a 
The symbol composed of a capital letter R contained 
within a circle, thus ®, may be used to indicate a registered 
trade-mark. 
Article 18 
1. Unchanged. 
Unchanged. 
Unchanged. Article 19 
Amended proposal for a Council Directive prohibiting the use in livestock farming of certain 
substances having a hormonal action (}) 
COM(85) 832 final 
(Submitted by the Commission to the Council pursuant to the second paragraph of 
Article 149 of the EEC Treaty on 18 December 1985) 
(85/C 351/06) 
THE COUNCIL OF THE EUROPEAN COMMUNITIES, 
Having regard to the Treaty establishing the European 
Economic Community, and in particular Article 43 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 administration to farm animals of certain 
substances having a hormonal action is at present regulated 
in different ways in the Member States; whereas while their 
immediate effect on animals from the farmer's point of 
view is clear, assessments of their effect on human health 
vary and this is reflected in the regulations governing their 
use; whereas this divergence distorts the conditions of 
competition in products that are the subject of common 
(!) OJ No C 313, 4. 12. 1985, p. 4. market organizations and is a serious barrier to intra-
Community trade; 
Whereas this distortion of competition and barrier to trade 
should be removed by ensuring that all consumers should 
be able to buy the products in question under identical 
conditions of supply and these products should, to meet 
their anxieties and expectations, be in the best possible 
state; whereas such a course of action is bound to bring 
about an increase in consumption of the product in 
question; 
Whereas the use of hormonal substances for fattening 
purposes should therefore be prohibited; where the use of 
certain substances for therapeutic purposes may be 
authorized but must be strictly controlled in order to 
prevent any misuse of them; 
Whereas, since it would be difficult to be certain of correct 
operation of the scheme as a whole if animals so treated and 
the meat from such animals were to be traded, this should