Proposal for a DIRECTIVE OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL to approximate the laws of the Member States relating to trade marks (Recast)
Date: 2013-03-27
Institutions: European Commission
Subjects: EU trade mark, European Union Intellectual Property Office, approximation of laws, brand name, registered trade mark, trade-mark law

EUROPEAN 
COMMISSION 

Brussels, 27.3.2013  
COM(2013) 162 final 

2013/0089 (COD) 

Proposal for a 

DIRECTIVE OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL 

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

(Recast) 

(Text with EEA relevance) 

{SWD(2013) 95 final} 
{SWD(2013) 96 final} 

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EXPLANATORY MEMORANDUM 

1. 

CONTEXT OF THE PROPOSAL 

1.1. 

General context and grounds for the proposal 

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

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

In  2007,  when  addressing  the  issue  of  the  financial  perspectives  of  OHIM,  the  Council1 
emphasised  that  the  establishment  of  OHIM  had  been  a  great  success  and  that  it  had 
contributed substantially to strengthening the competitiveness of the EU. It recalled that the 
Community  trade  mark  system  had  been  designed  to  co-exist  with  the  national  trade  mark 
systems,  which  continued  to  be  necessary  for  those  undertakings  which  did  not  want  their 
trade  marks  protected  at  EU  level.  The  Council  further  noted  the  importance  of  the 
complementary  work  of  national  trade  mark  offices,  and  called  on  OHIM  to  expand  its 
cooperation with them in the interest of the overall functioning of the Community trade mark 
system.  Last,  it  acknowledged  that  more  than a  decade  had  passed  since  the  creation  of  the 
Community  trade  mark,  and  therefore  underlined  the  need  for  an  overall  assessment  of  the 
functioning of the Community trade mark system. It invited the Commission to start work on 
a corresponding study, in particular with a view to intensifying and broadening the existing 
instruments of cooperation between OHIM and national trade mark offices.  

In its 2008 Small Business Act2 the Commission pledged to make the Community trade mark 
system  more  accessible  to  SMEs.  Furthermore,  the  2008  Communication  on  an  Industrial 

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2 

Competitiveness Council Conclusions of 21 and 22 May 2007, Council document 9427/07. 
Communication  from  the  Commission  to  the  Council,  the  European  Parliament,  the  European 
Economic and Social Committee and the Committee of the Regions, COM(2008) 394 final of 26 June 
2008. 

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Property Rights Strategy for Europe3 underlined the Commission’s commitment to effective 
and efficient trade mark protection and to a trade mark system of high quality. It concluded 
that it was time for an overall evaluation, which could form the basis for a future review of 
the  trade  mark  system  in  Europe  and  for  the  further  improvement  of  cooperation  between 
OHIM  and  National  Offices.  In  2010,  in  the  Communication  on  Europe  2020,  under  the 
Flagship  Initiative  ‘Innovation  Union’,  the  Commission  undertook  to  modernise  the 
framework  of  trade  marks  in  order  to  improve  framework  conditions  for  business  to 
innovate4. Finally, in its 2011 IPR strategy for Europe5, the Commission announced a review 
of the trade mark system in Europe with a view to modernising the system, both at EU and at 
national level, by making it more effective, efficient and consistent overall.  

1.2. 

Aim of the proposal 

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

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

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

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

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

2. 

RESULTS  OF  CONSULTATIONS  WITH  INTERESTED  PARTIES  AND 
IMPACT ASSESSMENT 

2.1. 

Public consultation 

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

The main component of the evaluation was a study the Max Planck Institute for Intellectual 
Property  and  Competition  Law  undertook  on  behalf  of  the  Commission.  The  study  was 

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5 

COM(2008) 465 final of 16 July 2008. 
COM(2010) 546 final of 6 October 2010. 
COM(2011)  287  final  of  24  May  2011,  A  Single  Market  for  Intellectual  Property  Rights:  Boosting 
creativity  and  innovation  to  provide  economic  growth,  high  quality  jobs  and  first  class  products  and 
services in Europe. 

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carried out between November 2009 and February 20116. In addition to expert analysis, the 
study  involved  consultations  with  stakeholders.  It  included  a  survey  among  users  of  the 
Community  trade  mark  system,  contributions  from  organisations  representing  trade  mark 
users at national, European and international level, and a hearing in June 2010 involving these 
organisations.  Lastly,  the  Institute  consulted  the  Intellectual  Property  Offices  of  all  the 
Member States and OHIM. 

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

Responding to the interim results of the study, the Council adopted Conclusions on 25 May 
20107.  While  noting  the  existing  inconsistencies  between  the  Community  trade  mark  and 
national  regimes,  these  conclusions  called  on  the  Commission  to  include  in  its  proposals 
measures  to  make  the  Directive  more  consistent  with  the  Regulation,  and  thereby  further 
contribute to reducing areas of divergence within the trade mark system in Europe as a whole. 

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

2.2. 

Impact Assessment 

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

The  consulation  and  evaluation  exercise  has  revealed  that  the  business  environment  in  the 
trade  mark  field  remains  very  mixed  in  spite  of  the  partial  harmonisation  of  national  laws 
dating  back  to  early  1990s.  The  level  of  harmonisation  imposed  by  the  Directive  was  quite 
low, focusing on a restricted number of substantive rules that were considered at that time to 
affect  the  functioning  of  the  internal  market  most  immediately,  whereas  a  large  number  of 
areas,  in  particular  those  relating  to  procedures,  were  left  unharmonised.  Moreover,  the 
Regulation was enacted several years after the Directive, which meant that at the time when 

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the 

final 

See 
http://ec.europa.eu/internal_market/indprop/tm/index_en.htm. 
Competitiveness Council Conclusions of 25 May 2010 on the future revision of the Trade Mark system 
in the EU. 

including 

annexes, 

study, 

MPI 

at 

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the Directive came into being there was no ‘common benchmark’ against which the efficiency 
of national proceedings could be measured. However, the procedures followed by OHIM have 
now  been  in  place  for  more  than  15  years,  and  are  generally  regarded  as  meeting  business 
needs and expectations.  

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

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

The following possible options for resolving the problem were considered: 

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

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

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

•  Option  4:  A  single  trade  mark  rulebook  which  would  replace  Member  States'  trade 

mark laws in their entirety, by setting uniform rules across the Union.  

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

3. 

LEGAL BASIS AND SUBSIDIARITY 

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

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

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

4. 

BUDGETARY IMPLICATION  

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

5. 

DETAILED EXPLANATION OF THE PROPOSAL 

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

5.1.  Modernising and improving existing provisions 

- Definition of a trade mark (Article 3) 

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

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

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1. 

Rights conferred without prejudice to prior rights 

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

2. 

Cases of double identity 

The recognition of additional trade mark functions under Article 5(1)(a) of the Directive has 
created legal uncertainty. In particular, the relationship between double identity cases and the 
extended protection afforded by Article 5(2) to trade marks having a reputation has become 
unclear9. In the interest of legal certainty and consistency, it is clarified that in cases of both 
double identity under Article 5(1)(a) and similarity under Article 5(1)(b) it is only the origin 
function which matters.  

3. 

Use as a trade or company name  

According  to  the  Court  of  Justice10,  Article  5(1)  of  the  Directive  is  applicable  where  the 
public considers the use of a company name as (also) relating to the goods or services offered 
by the company. It is therefore appropriate to treat trade name use of a protected trade mark as 
an infringing act, if the requirements of use for goods or services are met.  

4. 

Use in comparative advertising 

Directive  2006/114/EC  of  12  December  2006  concerning  misleading  and  comparative 
advertising11  regulates  the  conditions  under  which  advertising,  which  explicitly  or  by 
implication  identifies  a  competitor  or  goods  or  services  offered  by  a  competitor,  is 
permissible. The relationship of Directive 2006/114/EC to the legislation on trade marks has 
given  rise  to  doubts.  It  is  therefore  appropriate  to  clarify  that  the  trade  mark  owner  may 
prevent  the  use  of  his  trade  mark  in  comparative  advertising  where  such  comparative 
advertising does not satisfy the requirements of Article 4 of Directive 2006/114/EC. 

5. 

Consignments from commercial suppliers 

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

6. 

Goods brought into the customs territory 

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11 

OJ L 336, 23.12.1994, p. 213. 
Opinion of AG Jääskinen in Case C-323/09, Interflora, para. 9 .  
Judgment of 11 September 2007, Case C-17/06, Céline, ECR I-07041. 
OJ L 376, 27.12.2006, p. 21. 

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According  to  the  Court  of  Justice  in  the  Philips/Nokia  judgment12,  the  entry,  presence  and 
movement of non-EU goods in the customs territory of the EU under a suspensive procedure 
does,  under  the  existing  acquis,  not  infringe  intellectual  property  rights  as  conferred  by 
substantive  law  of  the  Union  and  its  Member  States.  Such  goods  can  only  be  classified  as 
counterfeit  once  there  is  proof  that  they  are  subject  of  a  commercial  act  directed  at  EU 
consumers, such  as sale, offer for sale or advertising. The implications of the Philips/Nokia 
judgment have met with strong criticism from stakeholders as placing an inappropriately high 
burden of proof on rights holders, and hindering the fight against counterfeiting. It is evident 
that  there  is  an  urgent  need  to  have  in  place  a  European  legal  framework  enabling  a  more 
effective  fight  against  the  counterfeiting  of  goods  as  a  fast-growing  activity.  It  is  therefore 
proposed  to  fill  the  existing  gap  by  entitling  right  holders  to  prevent  third  parties  from 
bringing  goods,  from  third  countries,  bearing  without  authorization  a  trade  mark  which  is 
essentially identical to the trade mark registered in respect of those goods, into the customs 
territory of the Union, regardless of whether they are released for free circulation.  

7. 

Preparatory acts 

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

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

The limitation in Article 14(1)(a) of the Directive is restricted in this proposal to cover the use 
of  personal  names  only  in  accordance  with  the  Joint  Statement  of  the  Council  and  the 
Commission13.  For  reasons  of  consistency,  the  limitation  in  Article  14(1)(b)  is  extended  to 
cover also the use of non-distinctive signs or indications. It is also considered appropriate to 
provide  in  Article  14(1)(c)  for  an  explicit  limitation  covering  referential  use  in  general. 
Finally, a separate paragraph clarifies the conditions under which the use of a trade mark shall 
not be considered as complying with honest business practices.  

5.2. 

Achieving greater approximation of substantive law  

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

Contrary to the Regulation, the grounds for refusal contained in the Directive do not address 
conflicts  with  protected  geographical  indications,  traditional  terms  for  wines  and  traditional 
specialities  guaranteed.  Consequently,  there  is  no  guarantee  that  the  levels  of  protection 
afforded  to  those  rights  by  other  instruments  of  Union  law14  are  actually  being  applied  in  a 
uniform  and  exhaustive  manner  in  trade  mark  examination  throughout  the  Union,  in 
particular,  when  applying  absolute  grounds  for  refusal.  It  is  therefore  proposed  to  insert 

12 
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14 

Judgment of 1 December 2011, Cases C-446/09 Philips and C-495/09 Nokia. 
Joint  statements  by  the  Council  and  the  Commission  of  the  European  Communities  entered  in  the 
minutes of the Council meeting, on the first Council Directive approximating the laws of the Member 
States on trade marks adopted on 21 December 1998. 
Notably  Regulation  (EC)  No  510/2006  (agricultural  products),  OJ  L  93,  31.3.2008,  p.12;  Regulation 
(EC) No 479/2008 (wines), OJ L 148, 6.6.2008, p. 1; and Regulation (EC) No 110/2008 (spirits), OJ L 
39, 13.2.2008, p. 16. 

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corresponding provisions relating to geographical indications, traditional terms for wine and 
traditional specialities guaranteed in the Directive. 

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

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

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

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

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

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

5.3. 

Achieving alignment of principal procedural rules 

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

In  line  with  the  proposal  on  the  Regulation,  this  Article  lays  down  common  rules  for  the 
designation  and  classification  of  goods  and  services.  These  rules  follow  the  principles 
established  by  the  Court  of  Justice15,  according  to  which  goods  and  services  for  which 
protection is sought need to be identified by the applicant with sufficient clarity and precision 
to enable the competent authorities and businesses to determine the extent  of protection  the 
trade  mark  confers.  The  general  indications  of  the  class  headings  of  the  Nice  Classification 
may be used to identify goods or services provided that such identification is sufficiently clear 
and precise. Article 40 further clarifies that the use of general terms has to be interpreted as 
including only all goods or services clearly covered by the literal meaning of the term.  

- Ex officio examination (Article 41) 

In line with the Regulation, this Article provides that the ex officio examination of whether a 
trade mark application is eligible for registration shall be confined to the absence of grounds 
concerning  the  mark  itself.  The  ex-officio  examination  of  relative  grounds  creates  several 
unnecessary  barriers  to  the  registration  of  trade  marks.  Companies  are  obliged  to  undergo 

15 

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

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superfluous expenses and delays and they often fall victim to extortion. The earlier right on 
which  the  objection  is  based  may  not  be  used  by  its  owner,  which  means  that  the  offices 
concerned raise an objection on the basis of a right that could not have been validly relied on 
by its proprietor to prevent the registration or use of a later mark. Hence, the ex officio system 
leads to artificial disputes, and distorts competition by erecting unjustified barriers to market 
entry. 

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

- Fees (Article 44) 

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

- Opposition procedure (Article 45) 

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

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

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

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

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

EN 

9 

   EN 

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

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

5.4. 

Facilitating cooperation between offices (Article 52) 

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

EN 

10 

   EN 

(cid:208) 2008/95/EC (adapted) 

2013/0089 (COD) 

Proposal for a 

DIRECTIVE OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL 

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

(Recast) 

(Text with EEA relevance) 

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION, 

Having regard to the Treaty establishing the European Community ⌦ on the Functioning of 
the European Union ⌫ , and in particular Article 95 ⌦ 114 ⌫ thereof, 

Having regard to the proposal from the European Commission, 

After transmission of the draft legislative act to the national Parliaments, 

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

Acting in accordance with the ordinary legislative procedure, 

Whereas: 

(cid:208) 2008/95/EC recital 1 (adapted) 
(cid:214) new 

(1)  (cid:214) A  number  of  amendments  are  to  be  made  to   The  content  of  Council  Directive 
89/104/EEC of 21 December 1988 2008/95/EC of the European Parliament and of the 
Council of 22 October 2008 to approximate the laws of the Member States relating to 
trade  marks2  has  been  amended3.  In  the  interests  of  clarity,  and  rationality  the  said 
⌦ that ⌫ Directive should be codified (cid:214) recast  . 

1 
2 
3 

OJ C […], […], p. […]. 
OJ L 40 299, 11.2.1989 8.11.2008, p. 1 25. 
See Annex I, Part A. 

EN 

1 

   EN 

 
 
                                                 
(cid:208) 2008/95/EC recital 2 (adapted) 

(2) 

The  ⌦ Directive  2008/95/EC  has  harmonised  central  provisions  of  substantive ⌫ 
trade  mark  laws  applicable  in  the  Member  States  before  the  entry  into  force  of 
Directive 89/104/EEC contained disparities which may have impeded ⌦ which at the 
time  of  adoption  were  considered  as  most  directly  affecting  the  functioning  of  the 
internal market by impeding ⌫ the free movement of goods and ⌦ the ⌫ freedom 
to provide services ⌦ in the Union ⌫ 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. 

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) 2008/95/EC 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) 2008/95/EC recital 4 

(cid:216) new 

(3) 

(4) 

(5) 

Trade  mark  protection  in  the  Member  States  coexists  with  protection  available  at 
Union  level  through  European  trade  marks  which  are  intellectual  property  rights 
unitary  in  character  and  valid  throughout  the  Union  as  laid  down  in  Council 
Regulation  (EC)  No  207/2009  of  26  February  2009  on  the  European  trade  mark4. 
Coexistence  of  trade  mark  systems  at  national  and  Union  level  in  fact  constitutes  a 
cornerstone of the Union’s approach to intellectual property protection.  

Further to the Commission's Communication of 16 July 2008 on an Industrial Property 
Rights Strategy for Europe5, the Commission carried out a comprehensive evaluation 
of  the  overall  functioning  of  the  trade  mark  system  in  Europe  as  a  whole,  covering 
Union and national levels and the interrelation between each other. 

In its conclusions of 25 May 2010 on the future revision of the Trade Mark system in 
the European Union6, the Council called on the Commission to present proposals for 
the revision of Regulation (EC) No 207/2009 and Directive 2008/95/EC. In doing so, 
the  revision  of  the  latter  should  include  measures  to  make  it  more  consistent  with 

4 
5 
6 

OJ L 78, 24.3.2009, p.1. 
COM(2008) 465. 
OJ c 140, 29.5.2010, p. 22. 

EN 

2 

   EN 

 
 
 
 
                                                 
(6) 

(7) 

(8) 

(9) 

Regulation (EC)  No 207/2009 and would thus reduce the areas of divergence  within 
the trade mark system in Europe as a whole.  

The  Commission  concluded  in  its  Communication  ‘A  Single  Market  for  Intellectual 
Property  Rights’  of  24  May  20117  that  in  order  to  meet  increased  demands  from 
stakeholders  for  faster,  higher  quality,  more  streamlined  trade  mark  registration 
systems,  which  are  more  consistent,  user  friendly,  publicly  accessible  and 
technologically up-to-date, there is a necessity to modernise the trade mark system in 
the Union as a whole and adapt it to the Internet era.  

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

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

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

(10) 

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

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

(cid:208) 2008/95/EC recital 5 (adapted) 

7 

COM(2011) 287. 

EN 

3 

   EN 

 
                                                 
(cid:208) 2008/95/EC recital 6 

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

(cid:208) 2008/95/EC recital 8 (adapted) 
(cid:214) new 

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

(13)  To this end, it is necessary to list examples of signs which may constitute a trade mark, 
provided  that  such  signs  are  capable  of  distinguishing  the  goods  or  services  of  one 
undertaking from those of other undertakings. (cid:214) In order to fulfil the objectives of the 
registration  system  for  trade  marks,  which  are  to  ensure  legal  certainty  and  sound 
administration,  it  is  also  essential  to  require  that  the  sign  is  capable  of  being 
represented  in  a  manner  which  allows  for  a  precise  determination  of  the  subject  of 
protection. A sign should therefore be permitted to be represented in any appropriate 
form, and thus not necessarily by graphic means, as long as the representation offers 
satisfactory guarantees to that effect.  

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

(cid:208) 2008/95/EC recital 9 

In order to reduce the total number of trade marks registered and protected in the Community 
and, consequently, the number of conflicts which arise between them, it is essential to require 
that registered trade marks must actually be used or, if not used, be subject to revocation. It is 
necessary to provide that a trade mark cannot be invalidated on the basis of the existence of a 
non-used earlier trade mark, while the Member States should remain free to apply the same 
principle in respect of the registration of a trade mark or to provide that a trade mark may not 

EN 

4 

   EN 

 
 
 
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. 

It is fundamental, in order to facilitate the free movement of goods and services, to ensure that 
registered trade marks enjoy the same protection under the legal systems of all the Member 
States.  This  should  not,  however,  prevent  the  Member  States  from  granting  at  their  option 
extensive protection to those trade marks which have a reputation. 

(cid:208) 2008/95/EC recital 10 

(cid:216) new 

(15) 

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

(cid:208) 2008/95/EC recital 11 

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

(cid:216) new 

(17) 

In  order  to  ensure  legal  certainty  and  full  consistency  with  the  principle  of  priority, 
under  which  an  earlier  registered  trade  mark  takes  precedence  over  later  registered 
trade marks, it is necessary to lay down that the enforcement of rights conferred by a 
trade mark should be without prejudice to the rights of proprietors acquired prior to the 
filing or priority date of the trade mark. This is in conformity with Article 16(1) of the 

EN 

5 

   EN 

 
 
 
 
(18) 

(19) 

(20) 

(21) 

Agreement  on  trade  related  aspects  of  intellectual  property  rights  of  15  April  1994 
(hereinafter: ‘TRIPS Agreement’)8. 

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

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

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

In order to ensure legal certainty and full consistency with specific Union legislation, 
it  is  appropriate  to  provide  that  the  proprietor  of  a  trade  mark  should  be  entitled  to 
prohibit  a  third  party  from  using  a  sign  in  a  comparative  advertising  where  such 
comparative  advertising  is  contrary  to  Directive  2006/114/EC  of  the  European 
Parliament  and  of  the  Council  of  12  December  2006  concerning  misleading  and 
comparative advertising9. 

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

(23) 

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

(24) 

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

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

8 
9 

OJ L 336, 23.12.1994, p. 213. 
OJ L 376, 27.12.2006, p. 21. 

EN 

6 

   EN 

                                                 
the proprietor should not be entitled to prevent the general fair and honest use of the 
mark for identifying or referring to the goods or services as those of the proprietor. 

(26) 

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

the  proprietor  has 

to  oppose 

legitimate 

reasons 

(cid:208) 2008/95/EC recital 12 

(27) 

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

(cid:216) new 

(28) 

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

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

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

EN 

7 

   EN 

 
 
(31) 

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

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

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

(34) 

(35) 

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

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

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

(37)  Member  States'  central  industrial  property  offices  should  cooperate  with  each  other 
and with the European Union Trade Marks and Designs Agency (‘the Agency’) in all 
fields of trade mark registration and administration in order to promote convergence of 

EN 

8 

   EN 

practices  and  tools,  such  as  the  creation  and  updating  of  common  or  connected 
databases and portals for consultation and search purposes. The offices of the Member 
States  and  the  Agency  should  further  cooperate  in  all  other  areas  of  their  activities 
which are relevant for the protection of trade marks in the Union. 

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

(cid:208) 2008/95/EC recital 7 

(cid:208) 2008/95/EC recital 13 (adapted) 

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

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

(cid:216) new 

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

(cid:208) 2008/95/EC recital 14 (adapted) 

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HAVE ADOPTED THIS DIRECTIVE: 

(cid:208) 2008/95/EC (adapted) 

Chapter 1 

⌦ General provisions ⌫ 

(cid:208) 2008/95/EC 

Article 1 

Scope 

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

(cid:216) new 

Article 2 

Definitions 

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

(a) 

(b) 

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

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

(c) 

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

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(cid:208) 2008/95/EC (adapted) 

Chapter 2 

⌦ The law on trade marks ⌫ 

SECTION 1 

⌦ SIGNS OF WHICH A TRADE MARK MAY CONSIST ⌫ 

Article 23 

Signs of which a trade mark may consist 

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

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

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

(cid:216) new 

(cid:208) 2008/95/EC (adapted) 

SECTION 2 

⌦ GROUNDS FOR REFUSAL OR INVALIDITY ⌫ 

Article 34 

⌦ Absolute ⌫ Ggrounds for refusal or invalidity 

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

(cid:208) 2008/95/EC 

(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; 

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’.; 

(cid:216) new 

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

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

(f) 

(g) 

(h) 

(i) 

(j) 

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

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

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

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

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

(cid:208) 2008/95/EC 

(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 ⌦ Union ⌫ Community; 

(cid:208) 2008/95/EC (adapted) 

(cid:208) 2008/95/EC 

(b) 

(c) 

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

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

(d) 

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

(cid:208) 2008/95/EC (adapted) 
(cid:214) new 

35. A trade mark shall not be refused registration or be declared invalid in accordance with 
paragraph 1(b), (c) or (d) if, before the date of application for registration (cid:214) or after the date 
of  registration,   and  following  the  use  which  has  been  made  of  it,  it  has  acquired  a 
distinctive character. 

6.  Any  Member  State  may  in  addition  provide  that  this  provision  ⌦ paragraph  5 ⌫  shall 
also  apply  where  the  distinctive  character  was  acquired  after  the  date  of  application  for 
registration or after (cid:214) and before  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. 

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Article 45 

Further ⌦ Relative ⌫ 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: 

(cid:208) 2008/95/EC 

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

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

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

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

(i) ⌦ European ⌫ Community trade marks; 

(cid:208) 2008/95/EC (adapted) 

(cid:208) 2008/95/EC 

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

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

(cid:208) 2008/95/EC (adapted) 

(b)  ⌦ European ⌫  Community  trade  marks  which  validly  claim  seniority,  in 
accordance with Council Regulation (EC) No 40/9410 of 20 December 1993 on the 
Community trade mark 207/2009, from a trade mark referred to in points (a)(ii) and 
(iii), even when the latter trade mark has been surrendered or allowed to lapse; 

10 

OJ L 11, 14.1.1994, p. 1. 

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(cid:208) 2008/95/EC 

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

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

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

(cid:208) 2008/95/EC (adapted) 
(cid:214) new 

(a) 

(b) 

(c) 

(d) 

if it is identical with, or similar to, an earlier Community trade mark (cid:214) irrespective 
of whether the goods or services for which it is applied or  within the meaning of 
paragraph  2  and  is  to  be,  or  has  been,  registered  for  goods  or  services  which  are 
(cid:214) identical  with,  similar  to  or   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  (cid:214) a  Member  State  or,  in  case  of  a  European  trade 
mark,  has  a  reputation  in  the  Union   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.; 

(cid:216) new 

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

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

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

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

(cid:208) 2008/95/EC (adapted) 

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(cid:208) 2008/95/EC 

(a) 

(ba) 

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; 

(cb) 

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

(i) 

a right to a name; 

(ii) 

a right of personal portrayal; 

(iii)  a copyright; 

(iv)  an industrial property right;. 

(d) 

(e) 

(f) 

(g) 

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; 

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 

EN 

16 

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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) 2008/95/EC (adapted) 
(cid:214) new 

Article 146 

Establishment a posteriori of invalidity or revocation of a trade mark 

Where the seniority  of  an earlier ⌦ national ⌫  trade  mark  which  has  been  surrendered  or 
allowed to lapse is claimed  for a ⌦ European ⌫ Community trade mark, the invalidity or 
revocation  of  the  earlier  ⌦ national ⌫  trade  mark  may  be  established  a  posteriori  (cid:214) , 
provided that the invalidity or revocation could also have been declared at the time the mark 
was  surrendered  or  allowed  to  lapse.  In  such  a  case  the  seniority  shall  cease  to  produce  its 
effects  . 

Article 7 

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

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

(cid:216) new 

Article 8  

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

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

(a) 

(b) 

(c) 

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

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

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

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(cid:208) 2008/95/EC (adapted) 
(cid:214) new 

Article 9 

Limitation ⌦ Preclusion of a declaration of invalidity ⌫ in consequence of 
acquiescence 

1. Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 
45(2) (cid:214) and (3)  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 ⌦ any ⌫ other earlier 
right referred to in Article 45(4)(ab) or (bc). 

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. 

(cid:208) 2008/95/EC 

(cid:208) 2008/95/EC (adapted) 
(cid:214) new 

SECTION 3 

⌦ RIGHTS CONFERRED AND LIMITATIONS ⌫ 

Article 510 

Rights conferred by a trade mark 

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

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

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(a) 

(b) 

any  ⌦ the ⌫  sign  which  is  identical  with  the  trade  mark  ⌦ and  is  used ⌫  in 
relation to goods or services which are identical with those for which the trade mark 
is  registered  (cid:214) and  where  such  use  affects  or  is  liable  to  affect  the  function  of  the 
trade mark to guarantee to consumers the origin of the goods or services ; 

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

2. (c)  Any Member State may also provide that the proprietor shall be entitled to prevent 
all  third  parties  not  having  his  consent  from  using  in  the  course  of  trade  any 
⌦ the ⌫ sign which is identical with, or similar to, the trade mark ⌦ irrespective 
of whether it is used ⌫ in relation to goods or services which are (cid:214) identical with, 
similar  or   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, ⌦ in particular ⌫ inter alia, may be prohibited under paragraphs 1 and 2: 

(cid:208) 2008/95/EC (adapted) 

(a) 

(b) 

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

(cid:208) 2008/95/EC 

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

(c) 

importing or exporting the goods under the sign; 

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

(cid:216) new 

(de) 

using the sign on business papers and in advertising.; 

(cid:208) 2008/95/EC 

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(cid:216) new 

(f) 

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

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

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

(cid:208) 2008/95/EC 

46. Where, under the law of a Member State, the use of a sign under the conditions referred to 
in paragraph 21, point (b) or (c)paragraph 2 could not be prohibited before the date of entry 
into force of the provisions necessary to comply with Directive 89/104/EEC in the Member 
State concerned,  the  rights  conferred by the trade  mark  may  not  be  relied  on  to  prevent  the 
continued use of the sign. 

57. Paragraphs 1,2,3 and 6 to 4 shall not affect provisions in any Member State relating to the 
protection  against  the  use  of  a  sign  other  than  for  the  purposes  of  distinguishing  goods  or 
services, where use of that sign without due cause takes unfair advantage of, or is detrimental 
to, the distinctive character or the repute of the trade mark. 

(cid:216) new 

Article 11 

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

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

(a) 

(b) 

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

offering  or  placing  on  the  market,  or  stocking  for  those  purposes,  or  importing  or 
exporting get-up, packaging or other means on which the mark is affixed. 

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Article 12 

Reproduction of trade marks in dictionaries 

If the reproduction of a trade mark in a dictionary, encyclopaedia or similar reference work 
gives the impression that it constitutes the generic name of the goods or services for which the 
trade mark is registered, the publisher of the work shall, at the request of the proprietor of the 
trade mark, ensure that the reproduction of the trade mark at the latest in the next edition of 
the publication is accompanied by an indication that it is a registered trade mark. 

Article 13 

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

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

(a) 

(b) 

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

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

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

(cid:208) 2008/95/EC 

Article 614 

Limitation of the effects of a trade mark 

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

(cid:208) 2008/95/EC (adapted) 
(cid:214) new 

(a) his own ⌦ personal ⌫ name or address; 

(b) (cid:214) signs or  indications (cid:214) which are not distinctive or which  concerning the 
kind,  quality,  quantity,  intended  purpose,  value,  geographical  origin,  the  time  of 
production of goods or of rendering of the service, or other characteristics of goods 
or services; 

(c) the trade mark (cid:214) for the purpose of identifying or referring to goods or services 
as those of the proprietor of the trade mark, in particular  where it ⌦ the use of the 

EN 

21 

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

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

(cid:216) new 

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

(a) 

(b) 

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

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

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

(cid:208) 2008/95/EC 

Article 715 

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 ⌦ Union ⌫  under  that  trade  mark  by  the 
proprietor or with his consent. 

(cid:208) 2008/95/EC (adapted) 

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. 

(cid:208) 2008/95/EC 

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(cid:208) 2008/95/EC (adapted) 

Article 1016 

Use of trade marks 

1.  If,  within  a  period  of  five  years  following  the  date  of  the  completion  of  the  registration 
procedure,  the  proprietor  has  not  put  the  trade  mark  to  genuine  use  in  the  Member  State  in 
connection with the goods or services in respect of which it is registered, or if such use has 
been suspended during an uninterrupted period of five years, the trade mark shall be subject to 
the ⌦ limits and ⌫ sanctions provided for in ⌦ Article 17, Article 19(1), Article 46(1), and 
Article 48(3) and (4) ⌫ this Directive, unless there are proper reasons for non-use. 

(cid:216) new 

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

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

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

(cid:208) 2008/95/EC 

(cid:208) 2008/95/EC 
(cid:214) new 

(a) 

use  of  the  trade  mark  in  a  form  differing  in  elements  which  do  not  alter  the 
distinctive character of the mark in the form in which it was registered (cid:214) , regardless 
of whether or not the trade mark in the form as used is also registered in the name of 
the proprietor  ; 

(b) 

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

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

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3. In relation to trade marks registered before the date of entry into force in the Member State 
concerned of the provisions necessary to comply with Directive 89/104/EEC: 

(a)  where  a  provision  in  force  prior  to  that  date  attached  sanctions  to  non-use  of  a 
trade  mark  during  an  uninterrupted  period,  the  relevant  period  of  five  years 
mentioned in the first subparagraph of paragraph 1 shall be deemed to have begun to 
run at the same time as any period of non-use which is already running at that date; 

(b) where there was no use provision in force prior to that date, the periods of five 
years mentioned in the first subparagraph of paragraph 1 shall be deemed to run from 
that date at the earliest. 

(cid:216) new 

Article 17 

Non-use as defence in infringement proceedings 

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

Article 18 

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

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

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

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

(cid:208) 2008/95/EC 

Article 11 

Sanctions for non-use of a trade mark in legal or administrative proceedings 

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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. 

(cid:208) 2008/95/EC (adapted) 

SECTION 4 

⌦ REVOCATION OF TRADE MARK RIGHTS ⌫ 

Article 1219 

⌦ Absence of genuine use as ⌫ Ggrounds 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. 

(cid:208) 2008/95/EC 

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

(cid:208) 2008/95/EC (adapted) 

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(cid:208) 2008/95/EC 

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

(cid:208) 2008/95/EC (adapted) 

Article 20 

⌦ Development into a common name or misleading indication as grounds for 
revocation ⌫ 

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

(cid:208) 2008/95/EC 

(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 1321 

(cid:208) 2008/95/EC (adapted) 

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

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

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(cid:216) new 

SECTION 5 

TRADE MARKS AS OBJECTS OF PROPERTY 

Article 22 

Transfer of registered trade marks 

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

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

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

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

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

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

Article 23 

Rights in rem 

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

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

Article 24 

Levy of execution 

1. A trade mark may be levied in execution. 

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

Article 25 

Insolvency proceedings 

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

(cid:208) 2008/95/EC 

Article 826 

Licensing 

1.  A  trade  mark  may  be  licensed  for  some  or  all  of  the  goods  or  services  for  which  it  is 
registered  and  for  the  whole  or  part  of  the  Member  State  concerned.  A  licence  may  be 
exclusive or non-exclusive. 

2. The proprietor of a trade mark may invoke the rights conferred by that trade mark against a 
licensee who contravenes any provision in his licensing contract with regard to: 

(a) its duration; 

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

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

(d) the territory in which the trade mark may be affixed; or 

(e) the quality of the goods manufactured or of the services provided by the licensee. 

(cid:216) new 

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

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

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

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Article 27 

The application for a trade mark as an object of property 

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

SECTION 6 

GUARANTEE MARKS, CERTIFICATION MARKS AND COLLECTIVE MARKS 

Article 28 

Definitions 

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

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

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

(cid:208) 2008/95/EC (adapted) 

Article 1529 

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

⌦ 1. Member States may provide for the registration of guarantee or certification marks. ⌫ 

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

23.  By  way  of  derogation  from  Article  3(1)(c),  Member  States  may  provide  that  ⌦ A 
guarantee  or  certification  mark  consisting  of ⌫  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 ⌦ shall ⌫ not entitle the proprietor to 
prohibit a third party from using in the course of trade such signs or indications, provided he 
uses  them  in  accordance  with  honest  practices  in  industrial  or  commercial  matters;.  iIn 

EN 

29 

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particular,  such  a  mark  may  not  be  invoked  against  a  third  party  who  is  entitled  to  use  a 
geographical name. 

Article 30 

⌦ Collective marks ⌫ 

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

(cid:216) new 

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

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

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

(cid:208) 2008/95/EC (adapted) 

(cid:216) new 

Article 31 

Regulations governing use of the collective mark 

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

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

Article 32 

Refusal of the application 

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

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

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

Article 33 

Use of collective marks 

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

Article 34 

Amendment to the regulations governing use of the collective mark 

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

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

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

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

Article 35 

Persons who are entitled to bring an action for infringement 

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

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

Article 36 

Additional grounds for revocation 

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

(a) 

(b) 

(c) 

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

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

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

Article 37 

Additional grounds for invalidity 

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

Chapter 3 

Procedures 

SECTION 1 

APPLICATION AND REGISTRATION 

Article 38 

Conditions with which applications must comply 

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

(a) 

(b) 

(c) 

(d) 

a request for the registration,  

information identifying the applicant, 

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

a representation of the trade mark. 

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

Article 39 

Date of filing 

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

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

Article 40 

Designation and classification of goods and services 

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

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

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

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

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

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

EN 

33 

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be  regarded  as  being  dissimilar  from  each  other  on  the  ground  that  they  appear  in  different 
classes under the Nice Classification. 

Article 41 

Ex officio examination 

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

Article 42 

Observations by third parties 

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

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

Article 43 

Division of applications and registrations 

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

Article 44 

Fees 

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

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SECTION 2 

PROCEDURES FOR OPPOSITION, REVOCATION AND INVALIDITY 

Article 45 

Opposition procedure 

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

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

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

Article 46 

Non-use as defence in opposition proceedings 

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

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

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

Article 47 

Procedure for revocation or declaration of invalidity 

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

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

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

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

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

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

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

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

Article 48 

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

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

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

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

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

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

Article 49 

Consequences of revocation and invalidity 

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

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

SECTION 3 

DURATION AND RENEWAL OF REGISTRATION 

Article 50 

Duration of registration 

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

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

Article 51 

Renewal 

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

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

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

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

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

Chapter 4 

Administrative cooperation 

Article 52 

Cooperation in the area of trade mark registration and administration 

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

Article 53 

Cooperation in other areas 

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

Chapter 5 

Final provisions 

(cid:208)  

Article 54 

Transposition 

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

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

(cid:208) 2008/95/EC (adapted) 

Article 16 

Communication 

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

Article 1755 

Repeal 

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

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

(cid:208) 2008/95/EC 

Article 1856 

Entry into force 

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

(cid:208) 2008/95/EC (adapted) 

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

(cid:208)  

(cid:208) 2008/95/EC 

Article 1957 

Addressees 

This Directive is addressed to the Member States. 

Done at Brussels,  

For the European Parliament 
The President 

For the Council 
The President 

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(cid:208) 2008/95/EC (adapted) 

ANNEX I 

PART A 

PART B 

Repealed Directive with its amendment 

(referred to in Article 17) 

Council Directive 
89/104/EEC 

Council Decision 92/10/EEC 

(OJ L 40, 11.2.1989, p. 
1) 

(OJ L 6, 11.1.1992, p. 
35) 

Time limit for transposition into national law 

(referred to in Article 17) 

Directive 

Time limit for transposition 

89/104/EEC 

31 December 1992 

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(cid:208) 2008/95/EC (adapted) 

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), (g) and (h) 

Article 3(1)(f), (g) and (h) 

Article 3(2), (3) and (4) 

Article 3(2), (3) and (4) 

Article 4 

Article 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 

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Article 12(1), second sentence 

Article 12(1), second subparagraph 

Article 12(1), third sentence 

Article 12(1), third subparagraph 

Article 12(2) 

Article 12(2) 

Article 13 

Article 14 

Article 15 

Article 13 

Article 14 

Article 15 

Article 16(1) and (2) 

— 

Article 16(3) 

— 

— 

Article 17 

— 

— 

Article 16 

Article 17 

Article 18 

Article 19 

Annex I 

Annex II 

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(cid:207) 

ANNEX 

CORRELATION TABLE 

Directive 2008/95/EC 

This Directive 

Article 1 

--- 

Article 2 

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

--- 

--- 

Article 1 

Article 2 

Article 3 

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

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

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

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

Article 4(4)(a) to (c) 

Article 3(2)(d) 

Article 4(3), second sentence 

Article 3(3), first sentence 

Article 3(3), second sentence 

Article 4(5) 

Article 4(6) 

Article 4(1) and (2) 

Article 5(1) and (2) 

Article 4(3) and (4)(a) 

--- 

Article 4(4)(g) 

--- 

Article 5(3)(a) 

Article 5(3)(b) 

Article 5(3)(c) 

Article 5(3)(d) 

Article 4(4)(b) and (c) 

Article 5(4)(a) and (b) 

Article 4(4)(d) to (f) 

Article 4(5) and (6) 

--- 

--- 

Article 5(5) and (6) 

Article 8 

Article 5(1), first introductory sentence 

Article 10(1) 

Article 5(1), second introductory sentence 

Article 10(2), introductory sentence 

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Article 5(1)(a) and (b) 

Article 10(2)(a) and (b) 

Article 5(2) 

Article 10(2) 

Article 5(3)(a) to (c) 

Article 10(3)(a) to (c) 

--- 

Article 5(3)(d) 

--- 

--- 

Article 5(4) and (5) 

--- 

--- 

--- 

Article 10(3)(d) 

Article 10(3)(e) 

Article 10(3)(f) 

Article 10(4) and (5) 

Article 10(6) and (7) 

Article 11 

Article 12 

Article 13 

Article 6(1)(a) to (c) 

Article 14(1)(a) to (c) 

--- 

Article 6(2) 

Article 7 

Article 8(1) and (2) 

--- 

Article 9 

Article 14(2) 

Article 14(3) 

Article 15 

Article 26(1) and (2) 

Article 26(3) to (5) 

Article 9 

Article 10(1), first subparagraph 

Article 16(1) 

--- 

Article 16(2) and (3) 

Article 10(1), second subparagraph 

Article 10(4) 

Article 10(2) 

Article 10(3) 

Article 11(1) 

Article 11(2) 

Article 11(3) 

Article 11(4) 

Article 10(5) 

--- 

Article 48(1) to (3) 

Article 46(1) 

Article 17 

Articles 17, 46(2) and Article 48(4) 

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--- 

Article 18 

Article 12(1), first subparagraph 

Article 19(1) 

Article 12(1), second subparagraph 

Article 19(2) 

Article 12(1), third subparagraph 

Article 19(3) 

Article 12(2) 

Article 13 

Article 14 

--- 

--- 

--- 

Article 15(1) 

Article 15(2) 

--- 

Article 16 

Article 17 

Article 18 

Article 19 

Article 20 

Article 7 and Article 21 

Article 6  

Articles 22 to 25 

Article 27  

Article 28 

29(1) and (2) 

Article 29(3) 

Articles 30 to 54(1) 

Article 54(2) 

Article 55 

Article 56 

Article 57 

_____________ 

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