Proposal for a Directive of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks (Codified version)
Date: 2006-12-19
Institutions: European Commission
Subjects: approximation of laws, brand name, codification of EU law, patents licence, trade mark, trade-mark law

COMMISSION OF THE EUROPEAN COMMUNITIES 

Brussels, 19.12.2006 
COM(2006)812 final 

2006/0264(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 

(Codified version) 

(presented by the Commission) 

EN 

   EN 

 
 
 
  
EXPLANATORY MEMORANDUM 

In  the  context  of  a  people’s  Europe,  the  Commission  attaches  great  importance  to 
simplifying  and  clarifying  Community  law  so  as  to  make  it  clearer  and  more 
accessible to the ordinary citizen, thus giving him new opportunities and the chance 
to make use of the specific rights it gives him. 

This aim cannot be achieved so long as numerous provisions that have been amended 
several times, often quite substantially, remain scattered, so that they must be sought 
partly  in  the  original  instrument  and  partly  in  later  amending  ones.  Considerable 
research work, comparing many different instruments, is thus needed to identify the 
current rules. 

For  this  reason  a  codification  of  rules  that  have  frequently  been  amended  is  also 
essential if Community law is to be clear and transparent. 

On  1  April  1987  the  Commission  therefore  decided1  to  instruct  its  staff  that  all 
legislative acts should be codified after no more than ten amendments, stressing that 
this  is  a  minimum  requirement  and  that  departments  should  endeavour  to  codify  at 
even  shorter  intervals  the  texts  for  which  they  are  responsible,  to  ensure  that  the 
Community rules are clear and readily understandable. 

the  Edinburgh  European  Council 
The  Conclusions  of 
(December 1992) confirmed this2, stressing the importance of codification as it offers 
certainty as to the law applicable to a given matter at a given time. 

the  Presidency  of 

Codification  must  be  undertaken  in  full  compliance  with  the  normal  Community 
legislative procedure. 

Given  that  no  changes  of  substance  may  be  made  to  the  instruments  affected  by 
codification, the European Parliament, the Council and the Commission have agreed, 
by  an  interinstitutional  agreement  dated  20  December  1994,  that  an  accelerated 
procedure may be used for the fast-track adoption of codification instruments. 

is 

this  proposal 

The  purpose  of 
to  undertake  a  codification  of  Council 
Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member 
States  relating  to  trade  marks3.  The  new  Directive  will  supersede  the  various  acts 
incorporated in it4; this proposal fully preserves the content of the acts being codified 
and hence does no more than bring them together with only such formal amendments 
as are required by the codification exercise itself. 

COM(87) 868 PV. 
See Annex 3 to Part A of the Conclusions. 
Carried out pursuant to the Communication from the Commission to the European Parliament and the 
Council – Codification of the Acquis communautaire, COM(2001) 645 final. 
See Annex I, Part A of this proposal. 

1. 

2. 

3. 

4. 

1 
2 
3 

4 

EN 

2 

   EN 

 
                                                 
5. 

The codification proposal was drawn up on the basis of a preliminary consolidation, 
in  all  official  languages,  of  Directive  89/104/EEC  and  the  instrument  amending  it, 
carried out by the Office for Official Publications of the European Communities, by 
means  of  a  data-processing  system.  Where  the  Articles  have  been  given  new 
numbers,  the  correlation  between  the  old and  the  new  numbers  is  shown  in  a  table 
contained in Annex II to the codified Directive. 

EN 

3 

   EN 

 
(cid:208) 89/104/EEC (adapted) 

2006/0264(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 

(Text with EEA relevance) 

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION, 

Having  regard  to  the  Treaty  establishing  the  European  Community,  and  in  particular 
Article ⌦ 95 ⌫ thereof, 

Having regard to the proposal from the Commission, 

Having regard to the opinion of the European Economic and Social Committee1, 

Acting in accordance with the procedure laid down in Article 251 of the Treaty2, 

Whereas: 

(1) 

Council Directive  89/104/EEC of 21 December 1988 to approximate the laws of the 
Member  States  relating  to  trade  marks3  has  been  substantially  amended4.  In  the 
interests of clarity and rationality the said Directive should be codified. 

(cid:208)  

(cid:208) 89/104/EEC Recital 1 (adapted) 

(2) 

The trade mark laws applicable in the Member States ⌦ before the entry into force of 
Directive  89/104/EEC  contained ⌫  disparities  which  may ⌦ have  impeded ⌫  the 
free  movement  of  goods  and  freedom  to  provide  services  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. 

1 
2 
3 
4 

OJ C […], […], p. […]. 
OJ C […], […], p. […]. 
OJ L 40, 11.2.1989, p. 1. Directive as amended by Decision 92/10/EEC (OJ L 6, 11.1.1992, p. 35). 
See Annex I, Part A. 

EN 

4 

   EN 

 
 
 
 
                                                 
(3) 

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. 

(cid:208) 89/104/EEC Recital 2 

(4) 

(5) 

(cid:208) 89/104/EEC Recital 3 (adapted) 

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. 

(cid:208) 89/104/EEC Recital 4 (adapted) 

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  relationship  between  them  and  trade  marks  acquired  by 
registration. 

(cid:208) 89/104/EEC Recital 5 (adapted) 

(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. 

(7) 

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. 

(cid:208) 89/104/EEC Recital 6 (adapted) 

(cid:208) 89/104/EEC Recital 7 (adapted) 

(8) 

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. 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.  The  grounds  for  refusal  or  invalidity  concerning  the  trade  mark  itself, 
for example, 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 

EN 

5 

   EN 

 
 
 
 
 
 
 
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. 

(cid:208) 89/104/EEC Recital 8 (adapted) 

(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. 

(cid:208) 89/104/EEC Recital 9 (adapted) 

(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 however not prevent the Member 
States  from  granting  at  their  option  extensive  protection  to  those  trade  marks  which 
have a reputation. 

(cid:208) 89/104/EEC Recital 10 
(adapted) 

(11)  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  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  the 
Directive. 

EN 

6 

   EN 

 
 
 
 
(cid:208) 89/104/EEC Recital 11 

(12) 

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. 

(cid:208) 89/104/EEC Recital 12 
(adapted) 

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

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

(cid:208)  

HAVE ADOPTED THIS DIRECTIVE: 

(cid:208) 89/104/EEC (adapted) 

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. 

EN 

7 

   EN 

 
 
 
 
 
(cid:208) 89/104/EEC 

Article 2 

Signs of which a trade mark may consist 

A trade mark may consist of any signs capable of being represented graphically, particularly 
words,  including  personal  names,  designs,  letters,  numerals,  the  shape  of  goods  or  of  their 
packaging, provided that such signs are capable of distinguishing the goods or services of one 
undertaking 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) 

(b) 

(c) 

(d) 

signs which cannot constitute a trade mark; 

trade marks which are devoid of any distinctive character; 

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; 

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) 

(g) 

(h) 

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

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; 

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’. 

EN 

8 

   EN 

 
 
2. 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: 

(a) 

the use of that trade mark may be prohibited pursuant to provisions of law other than 
trade mark law of the Member State concerned or of the Community; 

(b) 

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

(c) 

the trade mark includes badges, emblems and escutcheons other than those covered 
by Article 6 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; 

(cid:208) 89/104/EEC (adapted) 

(cid:208) 89/104/EEC 

(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 date of application for registration and following the 
use which has been made of it, it has acquired a distinctive character. Any Member State may 
in  addition  provide  that  this  provision  shall  also  apply  where  the  distinctive  character  was 
acquired after the date of application for registration or after 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. 

(cid:208) 89/104/EEC (adapted) 

(cid:208) 89/104/EEC 

Article 4 

Further grounds for refusal or invalidity concerning conflicts with earlier rights 

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

(a) 

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

EN 

9 

   EN 

 
 
 
 
 
(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. 

(cid:208) 89/104/EEC (adapted) 

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

(cid:208) 89/104/EEC 

(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; 

(i)  Community trade marks; 

(ii) 

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

(cid:208) 89/104/EEC (adapted) 

(iii) 

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

(cid:208) 89/104/EEC 

(cid:208) 89/104/EEC (adapted) 

(b) 

Community  trade  marks  which  validly  claim  seniority,  in  accordance  with 
⌦ [Council]  Regulation  (EC)  No  [40/945] ⌫,  from  a  trade  mark  referred  to  in 
(a)(ii) and (iii), even when the latter trade mark has been surrendered or allowed to 
lapse; 

(c) 

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

(d) 

trade marks which, on the date of application for 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. 

(cid:208) 89/104/EEC 

5 

OJ L 11, 14.1.1994, p. 1. 

EN 

10 

   EN 

 
 
 
 
 
 
 
                                                 
(cid:208) 89/104/EEC (adapted) 

3. ⌦ Without prejudice to paragraph 1, ⌫ 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 2 and is to be, or has been, 
registered  for  goods  or  services  which  are  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  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. 

4. ⌦ Without prejudice to paragraphs 1, 2 and 3 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: 

(cid:208) 89/104/EEC 

(a) 

(b) 

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; 

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; 

(c) 

the use of the trade mark may be prohibited by virtue of an earlier right other than the 
rights referred to in paragraph 2 and point (b) of this paragraph and in particular: 

(i) 

a right to a name; 

(ii) 

a right of personal portrayal; 

(iii)  a copyright; 

(iv)  an industrial property right; 

(d) 

(e) 

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; 

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; 

EN 

11 

   EN 

 
 
 
(f) 

(g) 

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; 

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. 

(cid:208) 89/104/EEC (adapted) 

(cid:208) 89/104/EEC 

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 parties not 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 mark is registered; 

(cid:208) 89/104/EEC (adapted) 

(b) 

any sign where, because of its identity with, or similarity to, the trade mark and the 
identity or similarity of the goods or services covered by the trade mark and the sign, 
there 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. 

EN 

12 

   EN 

 
 
 
 
(cid:208) 89/104/EEC 

2. 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 sign  which  is  identical 
with,  or  similar  to,  the  trade  mark  in  relation  to  goods  or  services  which  are  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. 

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

(a) 

(b) 

(c) 

(d) 

affixing the sign to the goods or to the packaging thereof; 

offering the goods, or putting them on the market or stocking them for these purposes 
under that sign, or offering or supplying services thereunder; 

importing or exporting the goods under the sign; 

using the sign on business papers and in advertising. 

4. Where, under the law of the Member State, the use of a sign under the conditions referred 
to in paragraph 1 (b) or 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. 

(cid:208) 89/104/EEC (adapted) 

5. Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection 
against the use of a sign other than for the purposes of distinguishing goods 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. 

(cid:208) 89/104/EEC 

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) 

(b) 

(c) 

his own name or address; 

indications  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; 

the trade mark where it is necessary to indicate the intended purpose of a product or 
service, in particular as accessories or spare parts; 

provided  he  uses  them  in  accordance  with  honest  practices  in  industrial  or  commercial 
matters. 

EN 

13 

   EN 

 
 
 
 
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  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 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 Community under 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  commercialisation  of  the  goods,  especially  where  the  condition  of  the  goods  is 
changed or impaired after they have been put on the market. 

Article 8 

Licensing 

1.  A  trade  mark  may  be  licensed  for  some  or  all  of  the  goods  or  services  for  which  it  is 
registered  and  for  the  whole  or  part  of  the  Member  State  concerned.  A  license  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 ⌦ : ⌫ 

(cid:208) 89/104/EEC (adapted) 

⌦ (a) ⌫ 

its duration; 

⌦ (b) ⌫ 

the form covered by the registration in which the trade mark may be used; 

⌦ (c) ⌫ 

the scope of the goods or services for which the licence is granted; 

⌦ (d) ⌫ 

the territory in which the trade mark may be affixed; or 

⌦ (e) ⌫ 

the  quality  of  the  goods  manufactured  or  of  the  services  provided  by  the 

licensee. 

EN 

14 

   EN 

 
 
(cid:208) 89/104/EEC 

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 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  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  the  earlier  right,  even  though  that  right  may  no 
longer be invoked against the later trade mark. 

Article 10 

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 sanctions provided for in this Directive, unless there are proper reasons for non-use. 

The following shall also constitute use within the meaning of ⌦ the first subparagraph ⌫: 

(cid:208) 89/104/EEC (adapted) 

(cid:208) 89/104/EEC 

(a) 

(b) 

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; 

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

2. 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. 

EN 

15 

   EN 

 
 
 
 
(cid:208) 89/104/EEC (adapted) 

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) 

(b) 

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; 

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. 

(cid:208) 89/104/EEC 

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. 

Article 12 

Grounds for revocation 

1. A trade mark shall be liable to revocation if, within a continuous period of five years, it has 
not been put 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. 

However, no person may claim that the proprietor's rights in a trade mark should be revoked 
where, during the interval between expiry of the five-year period and filing of the application 
for revocation, genuine use of the trade mark has been started or resumed. 

EN 

16 

   EN 

 
 
 
(cid:208) 89/104/EEC (adapted) 

⌦ 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. 

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

(cid:208) 89/104/EEC 

(a) 

(b) 

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; 

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 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 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. 

Article 14 

Establishment a posteriori of invalidity or revocation of a trade mark 

Where the seniority of an earlier trade mark which has been surrendered or allowed to lapse, 
is claimed for a Community trade mark, the invalidity or revocation of the earlier trade 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  authorise  the  registration  of 
collective marks or of guarantee or certification marks may provide that such marks shall not 
be registered, or shall be revoked or declared invalid, on grounds additional to those specified 
in Articles 3 and 12 where the function of those marks so requires. 

EN 

17 

   EN 

 
 
 
2.  By  way  of  derogation  from  Article  3(1)(c),  Member  States  may  provide  that  signs  or 
indications  which  may  serve,  in  trade,  to  designate  the  geographical  origin  of  the  goods  or 
services  may  constitute  collective,  guarantee  or  certification  marks.  Such  a  mark  does  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. 

(cid:208) 89/104/EEC (adapted) 

Article 16 

⌦ Communication ⌫ 

Member  States  shall  communicate  to  the  Commission  the  text  of  the  main  provisions  of 
national law ⌦ adopted ⌫ in the field governed by this Directive. 

(cid:208)  

Article 17 

Repeal 

Directive  89/104/EEC,  as  amended  by  the  Decision  listed  in  Annex  I,  Part  A,  is  repealed, 
without  prejudice  to  the  obligations  of  the  Member  States  relating  to  the  time-limit  for 
transposition into national law of that Directive, set out in Annex I, Part B. 

References  to  the  repealed  Directive  shall  be  construed  as  references  to  this  Directive  and 
shall be read in accordance with the correlation table in Annex II. 

Article 18 

Entry into force 

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

EN 

18 

   EN 

 
 
 
(cid:208) 89/104/EEC 

Article 19 

Addressees 

This Directive is addressed to the Member States. 

Done at Brussels,  

For the European Parliament 
The President 

For the Council 
The President 

EN 

19 

   EN 

 
 
(cid:207) 

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 

List of time-limit for transposition into national law 
(referred to in Article 17) 

Directive 

Time-limit for transposition 

89/104/EEC 

31 December 1992 

_____________ 

EN 

20 

   EN 

 
 
ANNEX II 

CORRELATION TABLE 

Directive 89/104/EEC 

This Directive 

Article 1 

Article 2 

Article 1 

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) to (h) 

Article 3(2) to (4) 

Article 3(1)(f) to (h) 

Article 3(2) to (4) 

Article 4 

Article 5 

Article 6 

Article 7 

Article 8 

Article 9 

Article 10(1) 

Article 10(2) 

Article 10(3) 

Article 10(4) 

Article 11 

Article 4 

Article 5 

Article 6 

Article 7 

Article 8 

Article 9 

Article 10(1), first subparagraph 

Article 10(1), second subparagraph 

Article 10(2) 

Article 10(3) 

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 

EN 

21 

   EN 

 
Article 12(2) 

Article 13 

Article 14 

Article 15 

Article 16(1) and (2) 

Article 16(3) 

- 

- 

Article 17 

- 

- 

Article 12(2) 

Article 13 

Article 14 

Article 15 

- 

Article 16 

Article 17 

Article 18 

Article 19 

Annex I 

Annex II 

_____________ 

EN 

22 

   EN