COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT pursuant to Article 294(6) of the Treaty on the Functioning of the European Union concerning the position of the Council on the adoption of a Directive of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks (recast)
Date: 2015-11-24
Institutions: Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs, European Commission
Subjects: EU trade mark, European Union Intellectual Property Office, approximation of laws, brand name, registered trade mark, trade-mark law

EN 

   EN 

   EUROPEAN COMMISSION  Brussels, 24.11.2015  COM(2015) 588 final 2013/0089 (COD)   COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT  pursuant to Article 294(6) of the Treaty on the Functioning of the European Union  concerning the position of the Council on the adoption of 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)  
 
 
2013/0089 (COD) 

COMMUNICATION FROM THE COMMISSION 
TO THE EUROPEAN PARLIAMENT 

pursuant to Article 294(6) of the Treaty on the Functioning of the European Union 

concerning the 

position of the Council on the adoption of 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) 

1. 

BACKGROUND 

Date of transmission of the proposal to the European Parliament and 
to the Council 
(document COM(2013) 0162 final – 2013/0089 (COD): 

27 March 2013 

Date  of  the  opinion  of  the  European  Economic  and  Social 
Committee: 

11 July 2013 

Date of the opinion of the European Data Protection Supervisor 

4 February 2014 

Date of the position of the European Parliament, first reading: 

25 February 2014 

Date of adoption of the position of the Council: 

10 November 2015 

2. 

OBJECTIVE OF THE PROPOSAL FROM THE COMMISSION 

Considered together as  a package, the  main common objective of the Commission  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  Proposal)  (COM(2013))  0162  final  – 
2013/0089  (COD)),  which  recasts  the  corresponding  Directive  2008/95/EC  of  the  European 
Parliament and of the Council of 22 October 2008 (Proposal to recast the Directive), and of 
the parallel proposal for the amendment of the Regulation (EC) No 207/2009 of 26 February 
2009 on the Community trade mark, is to foster innovation and economic growth by making 
trade mark systems all over Europe more accessible, efficient and effective for businesses in 
terms  of  lower  costs  and  complexity,  increased  speed,  greater  legal  certainty  and  better 
protection against counterfeiting.  

Specifically, the Proposal to recast the Directive aims at: 

– 

modernising  and  improving  the  current  provisions  of  Directive  2008/95,  by 
amending  outdated  provisions to  take  account  of  the  entry  into  force of  the  Lisbon 
Treaty,  increasing  legal  certainty  and  clarifying  trade  mark  rights  in  terms  of  their 
scope and limitations.  

EN 

2 

   EN 

 
 
 
– 

– 

3. 

3.1 

achieving greater approximation of national trade mark laws and procedures for the 
purpose of making them more consistent with the EU trade mark system. 

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.    

COMMENTS ON THE POSITION OF THE COUNCIL 

General comments 

The  position  of  the  Council  reflects  the  provisional  political  agreement  reached  by  the 
Council,  the  JURI  Committee  of  the  European  Parliament  and  the  Commission  in  informal 
tripartite  discussions  on  21  April  2015.  This  political  agreement  was  confirmed  by  the 
Council on 13 July 2015. The adoption of the Council's first reading position and the plenary 
vote in Parliament mid of December 2015 should lead to the final adoption of the text in an 
early  second  reading.  From  the  perspective  of  the  Commission,  the  compromise  reached  is 
reasonable and can be supported.  

3.2 

Comments on the amendments adopted by the European Parliament 

3.2.1.  European  Parliament  amendments  included  in  full,  in  part  or  in  principle  in 

Council's position at first reading 

The Council's position in first reading encompasses almost all main amendments introduced 
by the European Parliament, such as the removal of the obligation for Member States' national 
offices to examine absolute grounds for refusal in all jurisdictions and languages of the Union, 
and the deletion of the provision giving guidance as to when use of a trade mark by a third 
party  should  not  be  considered  in  accordance  with  honest  practices.  All  those  amendments 
can be endorsed by the Commission as being reasonable. 

The Council also endorsed the deletion of the proposed confinement of the so-called "double 
identity" rule – regulating protection against the use of identical signs for identical goods or 
services – to cases which affect the origin function of a trade mark. This can be accepted by 
the Commission. 

The  Council  further  endorsed  the  maintenance  of  the  option  for  Member  States  to  examine 
relative grounds for refusal of its own motion as favoured by the European Parliament. The 
Commission regrets the missed opportunity to remove such option in order to ensure a level 
playing  field  for  businesses  in  the  Union.  However,  the  Commission  can  accept  this 
amendment as part of the package, taking due account of the existing legal traditions in the 
Member States. 

The Council further accepted the amendments of the European Parliament that allow a notice 
of opposition and a request for revocation or for a declaration of invalidity to be filed on the 
basis of one or more earlier rights and be directed against a part or the totality of the goods or 
services applied for or registered. This issue was not part of the initial Commission proposal 
but can be fully endorsed as it will make the trade mark system more efficient.  

3.2.2.  European Parliament amendments not included in Council position at first reading 

The  Council  was  of  the  view  that  the  amendment  of  the  European  Parliament  limiting  the 
scope  of  the  proposed  new  provision  on  the  import  of  small  consignments  to  counterfeit 
goods  implied  an  inappropriate  restriction  of  already  existing  rights  conferred  by  a  trade 
mark. It was therefore decided to delete the proposed provision as in the light of the case law 

EN 

3 

   EN 

 
 
of  the  Court  of  Justice  of  the  European  Union,  this  proposed  provision  was  no  longer 
necessary. This deletion is supported by the Commission. 

The Council did not agree to further complement the limitations of the effects of a trade mark 
as  favoured  by  the  European  Parliament.  It  accepted  though  the  insertion  in  the  relevant 
recital concerning the resale of genuine goods of clarification in relation to, the use of trade 
marks for the purpose of artistic expression, and the need for the Directive to be applied in a 
manner  that  ensures  the  full  respect  for  fundamental  rights  and  freedoms.  This  can  be 
accepted by the Commission. 

3.3 

New provisions introduced by the Council and the Commission's position 

The Commission had proposed to entitle trade mark proprietors to prevent the transit of goods 
through a Member State under the sole condition that those goods bear a trade mark which is 
essentially  identical  with  a  trade  mark  registered  in  the  Member  State  concerned.  The 
Parliament endorsed the Commission proposal. The Council adopted  a compromise solution 
with  respect  to  the  provision  on  goods  in  transit,  whereby  the  right  to  prevent  goods  being 
brought  into  the  Member  State  where  the  trade  mark  is  registered  shall  lapse  if  the 
declarant/holder of the goods is able to show before the competent court that the trade mark 
proprietor is not entitled to prohibit the placing of the goods on the market of the country of 
final  destination.  While  preserving  the  core  objective  of  the  Commission's  proposal  to 
establish  efficient  and  effective  means  to  combat  the  ever-growing  streams  of  counterfeit 
goods passing through the Union, this amendment strikes an appropriate balance between the 
need  to  ensure  an  effective  enforcement  of  trade  mark  rights  and  the  necessity  to  provide 
safeguards in order not to unduly hamper the free flow of goods in the situations where trade 
mark rights belong to different parties outside the EU. The solution proposed by the Council 
can therefore be endorsed by the Commission. 

The Council further did not endorse the mandatory introduction of a so-called "one-class-per-
fee system" at national level but opted for an optional regime only. The Commission regrets 
that decision but can accept it as part of the package. 

4. 

CONCLUSION 

The  Council  position  meets  the  main  aims  of  the  Commission's  initial  proposal.  The 
Commission therefore supports the text.  

EN 

4 

   EN