Source: EURLEX
Language: en
Format: md

**Council of the**
**European Union**

**Interinstitutional File:**

**2013/0089 (COD)**

**LEGISLATIVE ACTS AND OTHER INSTRUMENTS**

**Brussels, 12 November 2015**
**(OR. en)**

**10374/1/15**
**REV 1**

**PI 43**
**CODEC 950**
**PARLNAT 128**

Subject: Position of the Council at first reading with a view to 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)

         - Adopted by the Council on 10 November 2015

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**DIRECTIVE (EU) 2015/…**

**OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL**

**of**

**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 on the Functioning of the European Union, and in particular

Article 114(1) 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 Committee **[1]**,

Acting in accordance with the ordinary legislative procedure **[2]**,

**1** OJ C 327, 12.11.2013, p. 42.
**2** Position of the European Parliament of 25 February 2014 (not yet published in the Official
Journal) and position of the Council at first reading of 10 November 2015 (not yet published
in the Official Journal). Position of the European Parliament of ... (not yet published in the
Official Journal) and decision of the Council of ... .

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Whereas:

(1) A number of amendments should be made to Directive 2008/95/EC of the European

Parliament and of the Council **[1]** . In the interests of clarity, that Directive should be recast.

(2) Directive 2008/95/EC has harmonised central provisions of substantive trade mark law

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.

(3) Trade mark protection in the Member States coexists with protection available at Union

level through European Union trade marks ('EU trade marks') which are unitary in

character and valid throughout the Union as laid down in Council Regulation (EC)

No 207/2009 **[2]** . The coexistence and balance of trade mark systems at national and Union

level in fact constitutes a cornerstone of the Union's approach to intellectual property

protection.

(4) Further to the Commission's Communication of 16 July 2008 on an Industrial Property

Rights Strategy for Europe, 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 the two.

**1** Directive 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 marks (OJ L 299, 8.11.2008,
p. 25).
**2** Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark
(OJ L 78, 24.3.2009, p. 1).

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(5) In its conclusions of 25 May 2010 on the future revision of the trade mark system in the

European Union, the Council called on the Commission to present proposals for the

revision of Regulation (EC) No 207/2009 and Directive 2008/95/EC. The revision of that

Directive should include measures to make it more consistent with Regulation (EC)

No 207/2009, which would thus reduce the areas of divergence within the trade mark

system in Europe as a whole, while maintaining national trade mark protection as an

attractive option for applicants. In this context, the complementary relationship between

the EU trade mark system and national trade mark systems should be ensured.

(6) The Commission concluded in its Communication of 24 May 2011 entitled 'A Single

Market for Intellectual Property Rights' that in order to meet increased demands from

stakeholders for faster, higher quality, more streamlined trade mark registration systems,

which are also 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.

(7) Consultation and evaluation for the purpose of this Directive has revealed that, in spite of

the previous partial harmonisation of national laws, there remain areas where further

harmonisation could have a positive impact on competitiveness and growth.

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(8) In order to serve the objective of fostering and creating a well-functioning internal market

and to facilitate acquiring and protecting trade marks in the Union to the benefit of the

growth and the competitiveness of European businesses, in particular small and medium

sized enterprises, it is necessary to go beyond the limited scope of approximation achieved

by Directive 2008/95/EC and extend approximation to other aspects of substantive trade

mark law governing trade marks protected through registration pursuant to Regulation

(EC) No 207/2009.

(9) 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, the principal procedural rules in the area of trade mark

registration in the Member States and in the EU trade mark system 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 essential to ensure that registered trade marks enjoy the same protection under the

legal systems of all the Member States. In line with the extensive protection granted to EU

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 with regard to

their relationship with trade marks acquired by registration.

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(12) Attainment of the objectives of this approximation of laws 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 are capable of constituting a

trade mark, provided that such signs are capable of distinguishing the goods or services of

one undertaking from those of other undertakings. In order to fulfil the objectives of the

registration system for trade marks, namely 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 is clear, precise, self-contained, easily accessible, intelligible, durable and

objective. A sign should therefore be permitted to be represented in any appropriate form

using generally available technology, and thus not necessarily by graphic means, as long as

the representation offers satisfactory guarantees to that effect.

(14) Furthermore, the grounds for refusal or invalidity concerning the trade mark itself,

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

those grounds are listed as an option for the Member States which should therefore be able

to maintain or introduce them in their legislation.

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(15) In order to ensure that the levels of protection afforded to geographical indications by

Union legislation and national 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. Furthermore, it is appropriate to ensure that

the scope of absolute grounds is extended to also cover protected traditional terms for wine

and traditional specialties guaranteed.

(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 event of

there being 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 a likelihood of confusion can be established, and in particular the onus of proof in

that regard, should be a matter for national procedural rules which should not be prejudiced

by this Directive.

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(17) In order to ensure legal certainty and full consistency with the principle of priority, under

which a registered earlier trade mark takes precedence over later registered trade marks, it

is necessary to provide that the enforcement of rights which are 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. Such an approach is in conformity with Article 16(1) of the

Agreement on trade related aspects of intellectual property rights of 15 April 1994 ('TRIPS

Agreement').

(18) 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 the

purposes of distinguishing goods or services. Use of the sign for purposes other than for

distinguishing goods or services should be subject to the provisions of national law.

(19) The concept of infringement of a trade mark should also comprise the use of the sign as a

trade name or similar designation, as long as such use is made for the purposes of

distinguishing goods or services.

(20) 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 comparative advertising where such comparative

advertising is contrary to Directive 2006/114/EC of the European Parliament and of the

Council **[1]** .

**1** Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006
concerning misleading and comparative advertising (OJ L 376, 27.12.2006, p. 21).

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(21) In order to strengthen trade mark protection and combat counterfeiting more effectively,

and in line with international obligations of the Member State under the World Trade

Organization (WTO) framework, in particular Article V of the General Agreement on

Tariffs and Trade on freedom of transit and, as regards generic medicines, the 'Declaration

on the TRIPS Agreement and Public Health' adopted by the Doha WTO Ministerial

Conference on 14 November 2001, the proprietor of a trade mark should be entitled to

prevent third parties from bringing goods, in the course of trade, into the Member State

where the trade mark is registered without being released for free circulation there, where

such goods come from third countries and bear without authorisation a trade mark which is

identical or essentially identical with the trade mark registered in respect of such goods.

(22) To this effect, it should be permissible for trade mark proprietors to prevent the entry of

infringing goods and their placement in all customs situations, including, in particular

transit, transhipment, warehousing, free zones, temporary storage, inward processing or

temporary admission, also when such goods are not intended to be placed on the market of

the Member State concerned. In performing customs controls, the customs authorities

should make use of the powers and procedures laid down in Regulation (EU) No 608/2013

of the European Parliament and of the Council **[1]**, also at the request of the right holders. In

particular, the customs authorities should carry out the relevant controls on the basis of risk

analysis criteria.

**1** Regulation (EU) No 608/2013 of the European Parliament and of the Council of
12 June 2013 concerning customs enforcement of intellectual property rights and repealing
Council Regulation (EC) No 1383/2003 (OJ L 181, 29.6.2013, p. 15).

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(23) In order to reconcile the need to ensure the effective enforcement of trade mark rights with

the necessity to avoid hampering the free flow of trade in legitimate goods, the entitlement

of the proprietor of the trade mark should lapse where, during the subsequent proceedings

initiated before the judicial or other authority competent to take a substantive decision on

whether the registered trade mark has been infringed, the declarant or the holder of the

goods is able to prove that the proprietor of the registered trade mark is not entitled to

prohibit the placing of the goods on the market in the country of final destination.

(24) Article 28 of Regulation (EU) No 608/2013 provides that a right holder is to be liable for

damages towards the holder of the goods where, inter alia, the goods in question are

subsequently found not to infringe an intellectual property right.

(25) Appropriate measures should be taken with a view to ensuring the smooth transit of

generic medicines. With respect to international non-proprietary names (INN) as globally

recognised generic names for active substances in pharmaceutical preparations, it is vital to

take due account of the existing limitations on the effect of trade mark rights.

Consequently, the proprietor of a trade mark should not have the right to prevent a third

party from bringing goods into a Member State where the trade mark is registered without

being released for free circulation there based upon similarities between the INN for the

active ingredient in the medicines and the trade mark.

(26) In order to enable proprietors of registered trade marks to combat counterfeiting more

effectively, they should be entitled to prohibit the affixing of an infringing trade mark to

goods, and certain preparatory acts carried out prior to the affixing.

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(27) The exclusive rights conferred by a trade mark should not entitle the proprietor to prohibit

the use of signs or indications by third parties which are used fairly and thus 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 only be

considered to include the use of the personal name of the third party. Such use should

further permit the use of descriptive or non-distinctive signs or indications in general.

Furthermore, the proprietor should not be entitled to prevent the fair and honest use of the

mark for the purpose of identifying or referring to the goods or services as those of the

proprietor. Use of a trade mark by third parties to draw the consumer`s attention to the

resale of genuine goods that were originally sold by or with the consent of the proprietor of

the trade mark in the Union should be considered as being fair as long as it is at the same

time in accordance with honest practices in industrial and commercial matters. Use of a

trade mark by third parties for the purpose of artistic expression should be considered as

being fair as long as it is at the same time in accordance with honest practices in industrial

and commercial matters. Furthermore, this Directive should be applied in a way that

ensures full respect for fundamental rights and freedoms, and in particular the freedom of

expression.

(28) It follows from the principle of free movement of goods that the proprietor of a trade mark

should 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 the proprietor has legitimate reasons to oppose further commercialisation of the

goods.

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(29) It is important, for reasons of legal certainty to provide that, without prejudice to his

interests as a proprietor of an earlier trade mark, the latter may no longer request a

declaration of invalidity or oppose the use of a trade mark subsequent to his own trade

mark 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.

(30) In order to ensure legal certainty and safeguard legitimately acquired trade mark rights, it

is appropriate and necessary to provide that, without prejudice to the principle that the later

trade mark cannot be enforced against the earlier trade mark, proprietors of earlier trade

marks should not be entitled to obtain refusal or invalidation or to oppose the use of a later

trade mark if 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 if 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 a reputation.

(31) 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 actually

be used in connection with the goods or services for which they are registered, or, if not

used in that connection within five years of the date of the completion of the registration

procedure, be liable to be revoked.

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(32) Consequently, a registered trade mark should only be protected in so far as it is actually

used and a registered earlier 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.

(33) It is appropriate to provide that, where the seniority of a national mark or a trade mark

registered under international arrangements having effect in the Member State has been

claimed for an EU trade mark and the mark providing the basis for the seniority claim has

thereafter been surrendered or allowed to lapse, the validity of that mark can still be

challenged. Such a challenge should be limited to situations where the mark could have

been declared invalid or revoked at the time it was removed from the register.

(34) 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 to the extent appropriate with those already in place for EU trade marks, and

should include rules on assignment and transfer, licensing, rights in rem and levy of

execution.

(35) 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 Union collective marks.

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(36) 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 EU trade marks.

(37) 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 to those applicable to EU 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. In the interest of clarity and legal certainty, the offices should, in cooperation

with each other, endeavour to compile a list reflecting their respective administrative

practices with regard to the classification of goods and services.

(38) For the purpose of ensuring effective trade mark protection, Member States should make

available an efficient administrative opposition procedure, allowing at least the proprietor

of earlier trade mark rights and any person authorised under the relevant law to exercise

the rights arising from a protected designation of origin or a geographical indication 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 within the longer

transposition period of seven years, after the entry into force of this Directive.

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(39) It is desirable that Member States' central industrial property offices and the Benelux

Office for Intellectual Property cooperate with each other and with the European Union

Intellectual Property Office in all fields of trade mark registration and administration in

order to promote convergence of practices and tools, such as the creation and updating of

common or connected databases and portals for consultation and search purposes. The

Member States should further ensure that their offices cooperate with each other and with

the European Union Intellectual Property Office in all other areas of their activities which

are relevant for the protection of trade marks in the Union.

(40) 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 provisions relating to unfair

competition, civil liability or consumer protection.

(41) Member States are bound by the Paris Convention for the Protection of Industrial Property

('the Paris Convention') and the TRIPS Agreement. It is necessary that this Directive be

entirely consistent with that Convention and that Agreement. The obligations of the

Member States resulting from that Convention and that Agreement should not be affected

by this Directive. Where appropriate, the second paragraph of Article 351 of the Treaty on

the Functioning of the European Union should apply.

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(42) Since the objectives of this Directive, namely to foster and create a well-functioning

internal market and to facilitate the registration, administration and protection of trade

marks in the Union to the benefit of growth and competitiveness, cannot be sufficiently

achieved by the Member States but can rather, by reason of their scale or effects, be better

achieved at Union level, the Union may adopt measures, in accordance with the principle

of subsidiarity as set out in Article 5 of the Treaty on European Union. In accordance with

the principle of proportionality as set out in that Article, this Directive does not go beyond

what is necessary in order to achieve those objectives.

(43) Directive 95/46/EC of the European Parliament and of the Council **[1]** governs the processing

of personal data carried out in the Member States in the context of this Directive.

(44) The European Data Protection Supervisor was consulted in accordance with Article 28(2)

of Regulation (EC) No 45/2001 of the European Parliament and of the Council **[2]** and

delivered an opinion on 11 July 2013.

(45) 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.

**1** Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on
the protection of individuals with regard to the processing of personal data and on the free
movement of such data (OJ L 281, 23.11.1995, p. 31).
**2** Regulation (EC) No 45/2001 of the European Parliament and of the Council of
18 December 2000 on the protection of individuals with regard to the processing of personal
data by the Community institutions and bodies and on the free movement of such data (OJ L
8, 12.1.2001, p. 1).

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(46) This Directive should be without prejudice to the obligations of the Member States under

Directive 2008/95/EC relating to the time-limit for transposition of Directive 89/104/EEC

into national law as set out in Part B of Annex I to Directive 2008/95/EC,

HAVE ADOPTED THIS DIRECTIVE:

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## **Chapter 1** **General Provisions**

_Article 1_

_Scope_

This Directive applies to every trade mark in respect of goods or services which is the subject of

registration or of an application for registration in a Member State as an individual trade mark, a

guarantee or certification mark or a collective 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.

_Article 2_

_Definitions_

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

(a) '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;

(b) 'register' means the register of trade marks kept by an office.

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## **Chapter 2** **Substantive Law on Trade Marks**

### **SECTION 1** **SIGNS OF WHICH A TRADE MARK MAY CONSIST**

_Article 3_

_Signs of which a trade mark may consist_

A trade mark may consist of any signs, in particular words, including personal names, or designs,

letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that

such signs are capable of:

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

and

(b) being represented on the register in a manner which enables the competent authorities and

the public to determine the clear and precise subject matter of the protection afforded to its

proprietor.

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### **SECTION 2** **GROUNDS FOR REFUSAL OR INVALIDITY**

_Article 4_

_Absolute grounds for refusal or invalidity_

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

(a) signs which cannot constitute a trade mark;

(b) trade marks which are devoid of any distinctive character;

(c) 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;

(d) 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, or another characteristic, which results from the nature of the goods

themselves,

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(ii) the shape, or another characteristic,of goods which is necessary to obtain a

technical result,

(iii) the shape, or another characteristic, which gives substantial value to the goods;

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

(g) 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;

(h) trade marks which have not been authorised by the competent authorities and are to

be refused or invalidated pursuant to Article 6ter of the Paris Convention for the

Protection of Industrial Property ('the Paris Convention');

(i) trade marks which are excluded from registration pursuant to Union legislation or the

national law of the Member State concerned, or to international agreements to which

the Union or the Member State concerned is party, providing for protection of

designations of origin and geographical indications;

(j) 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;

(k) 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 specialities guaranteed;

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(l) trade marks which consist of, or reproduce in their essential elements, an earlier plant

variety denomination registered in accordance with Union legislation or the national

law of the Member State concerned, or international agreements to which the Union

or the Member State concerned is party, providing protection for plant variety rights,

and are in respect to plant varieties of the same or closely related species.

2. 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 is not to be registered.

3. Any Member State may provide that a trade mark is not to be registered or, if registered, is

liable to be declared invalid where and to the extent that:

(a) the use of that trade mark may be prohibited pursuant to provisions of law other than

trade mark law of the Member State concerned or of the Union;

(b) the trade mark includes a sign of high symbolic value, in particular a religious

symbol;

(c) the trade mark includes badges, emblems and escutcheons other than those covered

by Article 6ter 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 law of the Member State.

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4. A trade mark shall not be refused registration in accordance with paragraph 1(b), (c) or (d)

if, before the date of application for registration, following the use which has been made of

it, it has acquired a distinctive character. A trade mark shall not be declared invalid for the

same reasons if, before the date of application for a declaration of invalidity, following the

use which has been made of it, it has acquired a distinctive character.

5. Any Member State may provide that paragraph 4 is also to apply where the distinctive

character was acquired after the date of application for registration but before the date of

registration.

_Article 5_

_Relative grounds for refusal or invalidity_

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

where:

(a) 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) 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.

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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) EU trade marks;

(ii) trade marks registered in the Member State concerned 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 concerned;

(b) EU trade marks which validly claim seniority, in accordance with Regulation (EC)

No 207/2009, of a trade mark referred to in points (a)(ii) and (iii), even when the

latter trade mark has been surrendered or allowed to lapse;

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

registration;

(d) trade marks which, on the date of application for registration of the trade mark, or,

where appropriate, of the priority claimed in respect of the application for

registration of the trade mark, are well known in the Member State concerned, in the

sense in which the words 'well known' are used in Article 6bis of the Paris

Convention.

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3. Furthermore, a trade mark shall not be registered or, if registered, shall be liable to be

declared invalid where:

(a) it is identical with, or similar to, an earlier trade mark irrespective of whether the

goods or services for which it is applied or registered are identical with, similar to or

not similar to those for which the earlier trade mark is registered, where the earlier

trade mark has a reputation in the Member State in respect of which registration is

applied for or in which the trade mark is registered or, in the case of a EU trade

mark, has a reputation in the Union and 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;

(b) 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;

(c) and to the extent that, pursuant to Union legislation or the law of the Member State

concerned providing for protection of designations of origin and geographical

indications:

(i) an application for a designation of origin or a geographical indication had

already been submitted in accordance with Union legislation or the law of the

Member State concerned prior to the date of application for registration of the

trade mark or the date of the priority claimed for the application, subject to its

subsequent registration;

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(ii) that designation of origin or geographical indication confers on the person

authorised under the relevant law to exercise the rights arising therefrom the

right to prohibit the use of a subsequent trade mark.

4. Any Member State may provide that a trade mark is not to be registered or, if registered, is

liable to be declared invalid where, and to the extent that:

(a) 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;

(b) 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 (a) 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;

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(c) the trade mark is liable to be confused with an earlier trade mark protected abroad,

provided that, at the date of the application, the applicant was acting in bad faith.

5. The Member States shall ensure that in appropriate circumstances there is no obligation to

refuse registration or to declare a trade mark invalid where the proprietor of the earlier

trade mark or other earlier right consents to the registration of the later trade mark.

6. Member States may provide that, by derogation from paragraphs 1 to 5, the grounds for

refusal of registration or invalidity in force in that Member State prior to the date of the

entry into force of the provisions necessary to comply with Council Directive

89/104/EEC **[1]**, are to apply to trade marks for which application has been made prior to that

date.

_Article 6_

_Establishment a posteriori of invalidity or revocation of a trade mark_

Where the seniority of a national trade mark or of a trade mark registered under international

arrangements having effect in the Member State, which has been surrendered or allowed to lapse, is

claimed for an EU trade mark, the invalidity or revocation of the trade mark providing the basis for

the seniority claim may be established a posteriori, provided that the invalidity or revocation could

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.

**1** First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the
Member States relating to trade marks (OJ L 40, 11.2.1989, p. 1).

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_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.

_Article 8_

_Lack of distinctive character or of reputation of an earlier trade mark_

_precluding a declaration of invalidity of a registered trade mark_

An application for a declaration of invalidity on the basis of an earlier mark shall not succeed at the

date of application for invalidation if it would not have been successful at the filing date or the

priority date of the later trade mark for any of the following reasons:

(a) the earlier trade mark, liable to be declared invalid pursuant to Article 4(1)(b), (c) or (d),

had not yet acquired a distinctive character in accordance with Article 4( 4);

(b) the application for a declaration of invalidity is based on Article 5(1)(b) and the earlier

trade mark had not yet become sufficiently distinctive to support a finding of likelihood of

confusion within the meaning of Article 5(1)(b);

(c) the application for a declaration of invalidity is based on Article 5(3)(a) and the earlier

trade mark had not yet acquired a reputation within the meaning of Article 5(3)(a).

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_Article 9_

_Preclusion of a declaration of invalidity due to acquiescence_

1. Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article

5(2) or Article 5(3)(a) 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, that

proprietor shall no longer be entitled on the basis of the earlier trade mark to apply for a

declaration that the later trade mark is invalid 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. Member States may provide that paragraph 1 of this Article is to apply to the proprietor of

any other earlier right referred to in Article 5(4)(a) or (b).

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.

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### **SECTION 3** **RIGHTS CONFERRED AND LIMITATIONS**

_Article 10_

_Rights conferred by a trade mark_

1. The 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, the proprietor of that registered trade mark shall be

entitled to prevent all third parties not having his consent from using in the course of trade,

in relation to goods or services, any sign where:

(a) the sign 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;

(b) the sign is identical with, or similar to, the trade mark and is used in relation to goods

or services which are identical with or similar to the goods or services for which the

trade mark is registered, 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;

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(c) the sign is identical with, or similar to, the trade mark irrespective of whether it is

used in relation to goods or services which are identical with, similar to, 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, may be prohibited under paragraph 2:

(a) affixing the sign to the goods or to the packaging thereof;

(b) offering the goods or putting them on the market, or stocking them for those

purposes, under the 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;

(e) using the sign on business papers and in advertising;

(f) using the sign in comparative advertising in a manner that is contrary to Directive

2006/114/EC.

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4. Without prejudice to the rights of proprietors acquired before the filing date or the priority

date of the registered trade mark, the proprietor of that registered trade mark shall also be

entitled to prevent all third parties from bringing goods, in the course of trade, into 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 authorisation a trade mark which is identical with the trade mark registered in

respect of such goods, or which cannot be distinguished in its essential aspects from that

trade mark.

The entitlement of the trade mark proprietor pursuant to the first subparagraph shall lapse

if, during the proceedings to determine whether the registered trade mark has been

infringed, initiated in accordance with Regulation (EU) No 608/2013, evidence is provided

by the declarant or the holder of the goods that the proprietor of the registered trade mark

is not entitled to prohibit the placing of the goods on the market in the country of final

destination.

5. Where, under the law of a Member State, the use of a sign under the conditions referred to

in paragraph 2 (b) or (c) 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.

6. Paragraphs 1, 2, 3 and 5 shall not affect provisions in any Member State relating to the

protection against the use of a sign other than use 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.

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_Article 11_

_The right to prohibit preparatory acts_

_in relation to the use of packaging or other means_

Where the risk exists that the packaging, labels, tags, security or authenticity features or devices, or

any other means to which the trade mark is affixed, could be used in relation to goods or services

and that use would constitute an infringement of the rights of the proprietor of a trade mark under

Article 10(2) and (3), the proprietor of that trade mark shall have the right to prohibit the following

acts if carried out in the course of trade:

(a) affixing a sign identical with or similar to the trade mark on packaging, labels, tags,

security or authenticity features or devices, or any other means on which the mark may be

affixed;

(b) offering or placing on the market, or stocking for those purposes, or importing or

exporting, packaging, labels, tags, security or authenticity features or devices, or any other

means on which the mark is affixed.

_Article 12_

_Reproduction of trade marks in dictionaries_

If the reproduction of a trade mark in a dictionary, encyclopaedia or similar reference work, in print

or electronic form, 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 is, without delay, and in

the case of works in printed form at the latest in the next edition of the publication, accompanied by

an indication that it is a registered trade mark.

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_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 or both of the following:

(a) to oppose the use of the trade mark by his agent or representative;

(b) to demand the assignment of the trade mark in his favour.

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

_Article 14_

_Limitation of the effects of a trade mark_

1. A trade mark shall not entitle the proprietor to prohibit a third party from using, in the

course of trade:

(a) the name or address of the third party, where that third party is a natural person;

(b) signs or indications which are not distinctive or which concern 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;

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(c) the trade mark for the purpose of identifying or referring to goods or services as

those of the proprietor of that trade mark, in particular, where the use of the trade

mark is necessary to indicate the intended purpose of a product or service, in

particular as accessories or spare parts.

2. Paragraph 1 shall only apply where the use made by the third party is in accordance with

honest practices in industrial or commercial matters.

3. A 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 law of the Member State in question and the use of that right is within

the limits of the territory in which it is recognised.

_Article 15_

_Exhaustion of the rights conferred by a trade mark_

1. A trade mark shall not entitle the proprietor to prohibit its use in relation to goods which

have been put on the market in the Union under that trade mark by the proprietor or with

the proprietor's consent.

2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to

oppose further commercialisation of the goods, especially where the condition of the goods

is changed or impaired after they have been put on the market.

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_Article 16_

_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 a continuous five-year period, the trade mark shall be subject to the

limits and sanctions provided for in Article 17, Article 19(1), Article 44(1) and (2), and

Article 46(3) and (4), unless there are proper reasons for non-use.

2. Where a Member State provides for opposition proceedings following registration, the

five-year period referred to in paragraph 1 shall be calculated from the date when the mark

can no longer be opposed or, in the event that an opposition has been lodged, from the date

when a decision terminating the opposition proceedings became final or the opposition was

withdrawn.

3. With regard to trade marks registered under international arrangements and having effect

in the Member State, the five-year period 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 or when an objection on absolute or relative grounds has been notified, the

period shall be calculated from the date when a decision terminating the opposition

proceedings or a ruling on absolute or relative grounds for refusal became final or the

opposition was withdrawn.

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4. The date of commencement of the five-year period referred to in paragraphs 1 and 2 shall

be entered in the register.

5. The following shall also constitute use within the meaning of paragraph 1:

(a) use of the trade mark in a form differing in elements which do not alter the

distinctive character of the mark in the form in which it was registered, 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.

6. Use of the trade mark with the consent of the proprietor shall be deemed to constitute use

by the proprietor.

_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

the proprietor's rights are not liable to be revoked pursuant to Article 19 at the time the infringement

action is brought. If the defendant so requests, the proprietor of the trade mark shall furnish proof

that, during the five-year period preceding the date of bringing the action, the trade mark has been

put to genuine use as provided in Article 16 in connection with the goods or services in respect of

which it is registered and which are cited as justification for the action, or that there are proper

reasons for non-use, provided that the registration procedure of the trade mark has at the date of

bringing the action been completed for not less than five years.

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_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 would not be declared invalid

pursuant to Article 8, Article 9(1) or (2) or Article 46(3).

2. In infringement proceedings, the proprietor of a trade mark shall not be entitled to prohibit

the use of a later registered EU trade mark where that later trade mark would not be

declared invalid pursuant to Article 53(1), (3) or (4), 54(1) or (2) or 57(2) of Regulation

(EC) No 207/2009.

3. Where the proprietor of a trade mark is not entitled to prohibit the use of a later registered

trade mark pursuant to paragraph 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 earlier right may no longer be invoked against the later trade

mark.

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### **SECTION 4** **REVOCATION OF TRADE MARK RIGHTS**

_Article 19_

_Absence of genuine use as ground for revocation_

1. A trade mark shall be liable to revocation if, within a continuous five-year period, 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.

2. No person may claim that the proprietor's rights in a trade mark should be revoked where,

during the interval between expiry of the five-year period and filing of the application for

revocation, genuine use of the trade mark has been started or resumed.

3. The commencement or resumption of use within a three-month period preceding the filing

of the application for revocation which began at the earliest on expiry of the continuous

five-year period 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.

_Article 20_

_Trade mark having become generic or misleading indication as grounds for revocation_

A trade mark shall be liable to revocation if, after the date on which it was registered:

(a) as a result 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;

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(b) as a result of the use made of it by the proprietor of the trade mark or with the proprietor's

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 21_

_Revocation relating to only some of the goods or services_

Where grounds for revocation of a trade mark exist in respect of only some of the goods or services

for which that trade mark has been registered, revocation shall cover those goods or services only.

### **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. Member States shall have procedures in place to allow for the recordal of transfers in their

registers.

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_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. Member States shall have procedures in place to allow for the recordal of rights in rem in

their registers.

_Article 24_

_Levy of execution_

1. A trade mark may be levied in execution.

2. Member States shall have procedures in place to allow for the recordal of levy of execution

in their registers.

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_Article 25_

_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.

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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. Member States shall have procedures in place to allow for the recordal of licences in their

registers.

_Article 26_

_The application for a trade mark as an object of property_

Articles 22 to 25 shall apply to applications for trade marks.

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### **SECTION 6** **GUARANTEE OR CERTIFICATION MARKS** **AND COLLECTIVE MARKS**

_Article 27_

_Definitions_

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

(a) '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 material, mode of manufacture of goods or

performance of services, quality, accuracy or other characteristics from goods and services

which are not so certified;

(b) '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.

_Article 28_

_Guarantee or certification marks_

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

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2. Any natural or legal person, including institutions, authorities and bodies governed by

public law, may apply for guarantee or certification marks provided that the person does

not carry on a business involving the supply of goods or services of the kind certified.

Member States may provide that a guarantee or certification mark is not to be registered

unless the applicant is competent to certify the goods or services for which the mark is to

be registered.

3. Member States may provide that guarantee or certification marks are not to be registered,

or are to be revoked or declared invalid, on grounds other than those specified in Articles

4, 19 and 20 where the function of those marks so requires.

4. By way of derogation from Article 4(1)(c), Member States may provide that signs or

indications which may serve, in trade, to designate the geographical origin of the goods or

services may constitute guarantee or certification marks. Such a guarantee or certification

mark shall not entitle the proprietor to prohibit a third party from using in the course of

trade such signs or indications, provided that third party 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.

5. The requirements laid down in Article 16 shall be satisfied where genuine use of a

guarantee or certification mark in accordance with Article 16 is made by any person who

has the authority to use it.

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_Article 29_

_Collective marks_

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

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, 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), Member States may provide that signs or

indications which may serve, in trade, to designate the geographical origin of the goods or

services may constitute collective marks. Such 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 that third party 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.

_Article 30_

_Regulations governing use of a collective mark_

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

office.

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2. The regulations governing use shall specify at least 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 29(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,

provided that the person fulfils all the other conditions of the regulations.

_Article 31_

_Refusal of an application_

1. In addition to the grounds for refusal of a trade mark application provided for in Article 4,

where appropriate with the exception of Article 4(1)(c) concerning signs or indications

which may serve, in trade, to designate the geographical origin of the goods or services,

and Article 5,and without prejudice to the right of an office not to undertake examination

_ex officio_ of relative grounds, an application for a collective mark shall be refused where

the requirements of point (b) of Article 27, Article 29 or Article 30 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.

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_Article 32_

_Use of collective marks_

The requirements of Article 16 shall be satisfied where genuine use of a collective mark in

accordance with that Article is made by any person who has authority to use it.

_Article 33_

_Amendment to the regulations governing use of a collective mark_

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

governing use.

2. Amendments to the regulations governing use shall be mentioned in the register unless the

amended regulations do not satisfy the requirements of Article 30 or involve one of the

grounds for refusal referred to in Article 31.

3. 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 those amendments in the register.

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_Article 34_

_Persons entitled to bring an action for infringement_

1. Article 25(3) and (4) shall apply to every person who has the 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 as

a result of unauthorised use of the mark.

_Article 35_

_Additional grounds for revocation_

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 the following grounds:

(a) the proprietor does not take reasonable steps to prevent the mark being used in a manner

that is incompatible with the conditions of use laid down in the regulations governing use,

including any amendments thereto mentioned in the register;

(b) 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 31(2);

(c) an amendment to the regulations governing use of the mark has been mentioned in the

register in breach of Article 33(2), unless the proprietor of the mark, by further amending

the regulations governing use, complies with the requirements of that Article.

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_Article 36_

_Additional grounds for invalidity_

In addition to the grounds for invalidity provided for in Article 4, where appropriate with the

exception of Article 4(1)(c) concerning signs or indications which may serve, in trade, to designate

the geographical origin of the goods or services, and Article 5, a collective mark which is registered

in breach of Article 31 shall be declared invalid unless the proprietor of the mark, by amending the

regulations governing use, complies with the requirements of Article 31.

## **Chapter 3** **Procedures**

### **SECTION 1** **APPLICATION AND REGISTRATION**

_Article 37_

_Application requirements_

1. An application for registration of a trade mark shall contain at least all of the following:

(a) a request for registration;

(b) information identifying the applicant;

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(c) a list of the goods or services in respect of which the registration is requested;

(d) a representation of the trade mark, which satisfies the requirements set out in point

(b) of Article 3.

2. The application for a trade mark shall be subject to the payment of a fee determined by the

Member State concerned.

_Article 38_

_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 37(1) are filed with the office by the

applicant.

2. Member States may, in addition, provide that the accordance of the date of filing is to be

subject to the payment of a fee referred to in Article 37(2).

_Article 39_

_Designation and classification of goods and services_

1. The goods and services in respect of which trade mark 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 ('the Nice Classification').

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2. The goods and services for which 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.

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 set out in this Article.

4. The office shall reject an application in respect of indications or terms which are unclear or

imprecise, where the applicant does not suggest an acceptable wording within a period set

by the office to that effect.

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 applicant shall group

the goods and services 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

shall present them in the order of the classes.

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7. 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. Goods and services shall not

be regarded as being dissimilar from each other on the ground that they appear in different

classes under the Nice Classification.

_Article 40_

_Observations by third parties_

1. Member States may provide that 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

grounds the trade mark should not be registered _ex officio_ .

Persons and groups or bodies as referred to in the first subparagraph shall not be parties to

the proceedings before the office.

2. In addition to the grounds referred to in paragraph 1 of this Article, 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

31(1) and (2). This provision may be extended to cover certification and guarantee marks

where regulated in Member States.

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_Article 41_

_Division of applications and registrations_

The applicant or proprietor may divide a national trade mark application or registration into two or

more separate applications or registrations by sending a declaration to the office and indicating for

each divisional application or registration the goods or services covered by the original application

or registration which are to be covered by the divisional applications or registrations.

_Article 42_

_Class fees_

Member States may provide that the application and renewal of a trade mark is to 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 43_

_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 of this Article shall at least provide

that the proprietor of an earlier trade mark referred to in Article 5(2) and Article 5(3) (a),

and the person authorised under the relevant law to exercise the rights arising from a

protected designation of origin or geographical indication referred to in Article 5(3)(c)

shall be entitled to file a notice of opposition. A notice of opposition may be filed on the

basis of one or more earlier rights, provided that they all belong to the same proprietor, and

on the basis of part or the totality of the goods or services in respect of which the earlier

right is protected or applied for, and may be directed against part or the totality of the

goods or services in respect of which the contested mark is applied for.

3. The parties shall be granted, at their joint request, a minimum of two months in the

opposition proceedings in order to allow for the possibility of a friendly settlement

between the opposing party and the applicant.

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_Article 44_

_Non-use as defence in opposition proceedings_

1. In opposition proceedings pursuant to Article 43, where at the filing date or date of priority

of the later trade mark, the five-year period within which the earlier trade mark must have

been put to genuine use as provided for in Article 16 had expired, at the 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 five-year period 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 of that part of the goods

or services only.

3. Paragraphs 1 and 2 of this Article shall also apply where the earlier trade mark is an EU

trade mark. In such a case, the genuine use of the EU trade mark shall be determined in

accordance with Article 15 of Regulation (EC) No 207/2009.

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_Article 45_

_Procedure for revocation or declaration of invalidity_

1. Without prejudice to the right of the parties to appeal to the courts, Member States shall

provide for an efficient and expeditious administrative procedure before their offices for

the revocation or declaration of invalidity of a trade mark.

2. The administrative procedure for revocation shall provide that the trade mark is to be

revoked on the grounds provided for in Articles 19 and 20.

3. The administrative procedure for invalidity shall provide that the trade mark is to 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(1) to (3).

4. The administrative procedure shall provide that at least the following are to be entitled to

file an application for revocation or for a declaration of invalidity:

(a) in the case of paragraph 2 and paragraph 3(a), 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, and which, under the terms of

the law governing it, has the capacity to sue in its own name and to be sued;

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(b) in the case of paragraph 3(b) of this Article, the proprietor of an earlier trade mark

referred to in Article 5(2) and Article 5(3)(a), and the person authorised under the

relevant law to exercise the rights arising from a protected designation of origin or

geographical indication referred to in Article 5(3)(c).

5. An application for revocation or for a declaration of invalidity may be directed against a

part or the totality of the goods or services in respect of which the contested mark is

registered.

6. An application for a declaration of invalidity may be filed on the basis of one or more

earlier rights, provided they all belong to the same proprietor.

_Article 46_

_Non-use as defence in proceedings seeking a declaration of invalidity_

1. In 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 five-year period

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 are cited as justification for the

application, or that there are proper reasons for non-use, provided that the registration

process of the earlier trade mark has at the date of the application for a declaration of

invalidity been completed for not less than five years.

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2. Where, at the filing date or date of priority of the later trade mark, the five-year period

within which the earlier trade mark was to 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 under paragraph 1 of this Article, furnish proof that the trade mark was put

to genuine use during the five-year period preceding the filing date or date of priority, or

that proper reasons for non-use existed.

3. In the absence of the proof 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 of that part of the goods or services only.

5. Paragraphs 1 to 4 of this Article shall also apply where the earlier trade mark is an EU

trade mark. In such a case, genuine use of the EU trade mark shall be determined in

accordance with Article 15 of Regulation (EC) No 207/2009.

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_Article 47_

_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 on the application for revocation 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.

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### **SECTION 3** **DURATION AND RENEWAL OF REGISTRATION**

_Article 48_

_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 49 for further 10 year-periods.

_Article 49_

_Renewal_

1. Registration of a trade mark shall be renewed at the request of the proprietor of the trade

mark or any person authorised to do so by law or by contract, provided that the renewal

fees have been paid. Member States may provide that receipt of payment of the renewal

fees is to be deemed to constitute such a request.

2. The office shall inform the proprietor of the trade mark of the expiry of the registration at

least six months before the said expiry. The office shall not be held liable if it fails to give

such information.

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3. The request for renewal shall be submitted and the renewal fees shall be paid within a

period of at least six months immediately preceding the expiry of the registration. Failing

this, the request may be submitted within a further period of six months following the

expiry of the registration or of the subsequent renewal thereof. The renewal fees and an

additional fee shall be paid within that further period.

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 recorded in the register.

### **SECTION 4** **COMMUNICATION WITH THE OFFICE**

_Article 50_

_Communication with the office_

Parties to the proceedings or, where appointed, their representatives, shall designate an official

address for all official communication with the office. Member States shall have the right to require

that such an official address be situated in the European Economic Area.

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## **Chapter 4** **Administrative Cooperation**

_Article 51_

_Cooperation in the area of trade mark registration and administration_

The offices shall be free to cooperate effectively with each other and with the European Union

Intellectual Property Office in order to promote convergence of practices and tools in relation to the

examination and registration of trade marks.

_Article 52_

_Cooperation in other areas_

The offices shall be free to cooperate effectively with each other and with the European Union

Intellectual Property Office in all areas of their activities other than those referred to in Article 51

which are of relevance for the protection of trade marks in the Union.

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## **Chapter 5** **Final provisions**

_Article 53_

_Data protection_

The processing of any personal data carried out in the Member States in the framework of this

Directive shall be subject to national law implementing Directive 95/46/EC.

_Article 54_

_Transposition_

1. Member States shall bring into force the laws, regulations and administrative provisions

necessary to comply with Articles 3 to 6, Articles 8 to 14, Articles 16, 17 and 18, Articles

22 to 39, Article 41, Articles 43 to 50 by … **[*]** . Member States shall bring into force the

laws, regulations and administrative provisions to comply with Article 45 by … **[**]** . They

shall immediately communicate the text of those measures to the Commission.

When Member States adopt those measures, 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.

***** OJ: Please insert date: 36 months after the date of entry into force of this Directive.
****** OJ: Please insert date: seven years after the date of entry into force of this Directive.

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2. Member States shall communicate to the Commission the text of the main provisions of

national law which they adopt in the field covered by this Directive.

_Article 55_

_Repeal_

Directive 2008/95/EC is repealed with effect from … **[*]**, without prejudice to the obligations of the

Member States relating to the time-limit for the transposition into national law of Directive

89/104/EEC set out in 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 .

***** OJ: Please insert date: day after the date set out in the first sentence of the first subparagraph
of Article 54(1) of this Directive.

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_Article 56_

_Entry into Force_

This Directive shall enter into force on the twentieth day following that of its publication in the

_Official Journal of the European Union_ .

Articles 1, 7, 15, 19, 20, 21 and 54 to 57 shall apply from … **[*]** .

_Article 57_

_Addressees_

This Directive is addressed to the Member States.

Done at …, …

_For the European Parliament_ _For the Council_

_The President_ _The President_

***** OJ: Please insert date: day after the date set out in the first sentence of the first subparagraph
of Article 54(1) of this Directive.

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**ANNEX**

**Correlation table**

|Directive 2008/95/EC|This Directive|
|---|---|
|Article 1<br>---<br>Article 2<br>Article 3(1)(a) to (h)<br>---<br>---<br>Article 3(2)(a) to (c)<br>Article 3(2)(d)<br>Article 3(3), first sentence<br>---<br>Article 3(3), second sentence<br>Article 3(4)<br>Article 4(1) and (2)<br>Article 4(3) and (4)(a)<br>---<br>---<br>Article 4(4)(b) and (c)<br>Article 4(4)(d) to (f)<br>Article 4(4)(g)|Article 1<br>Article 2<br>Article 3<br>Article 4(1)(a) to (h)<br>Article 4(1)(i) to (l)<br>Article 4(2), first sentence<br>Article 4(3)(a) to (c)<br>Article 4(2), second sentence<br>Article 4(4), first sentence<br>Article 4(4), second sentence<br>Article 4(5)<br>---<br>Article 5(1) and (2)<br>Article 5(3)(a)<br>Article 5(3)(b)<br>Article 5(3)(c)<br>Article 5(4)(a) and (b)<br>---<br>Article 5(4)(c)|

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|Directive 2008/95/EC|This Directive|
|---|---|
|Article 4(5) and (6)<br>---<br>Article 5(1), first introductory sentence<br>Article 5(1), second introductory sentence<br>Article 5(1)(a) and (b)<br>Article 5(2)<br>Article 5(3)(a) to (c)<br>---<br>Article 5(3)(d)<br>---<br>---<br>Article 5(4) and (5)<br>---<br>---<br>---<br>Article 6(1)(a) to (c)<br>Article 6(2)<br>Article 7<br>Article 8(1) and (2)<br>---<br>Article 9<br>Article 10(1), first subparagraph<br>---|Article 5(5) and (6)<br>Article 8<br>Article 10(1)<br>Article 10(2), introductory sentence<br>Article 10(2)(a) and (b)<br>Article 10(2)(c)<br>Article 10(3)(a) to (c)<br>Article 10(3)(d)<br>Article 10(3)(e)<br>Article 10(3)(f)<br>Article 10(4)<br>Article 10(5) and (6)<br>Article 11<br>Article 12<br>Article 13<br>Article 14(1)(a) to (c), and (2)<br>Article 14(3)<br>Article 15<br>Article 25(1) and (2)<br>Article 25(3) to (5)<br>Article 9<br>Article 16(1)<br>Article 16(2) to (4)|

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# ANNEX DGG 3B EN

|Directive 2008/95/EC|This Directive|
|---|---|
|Article 10(1), second subparagraph<br>Article 10(2)<br>Article 10(3)<br>Article 11(1)<br>Article 11(2)<br>Article 11(3)<br>Article 11(4)<br>---<br>Article 12(1), first subparagraph<br>Article 12(1), second subparagraph<br>Article 12(1), third subparagraph<br>Article 12(2)<br>Article 13<br>Article 14<br>---<br>---<br>---<br>Article 15(1)<br>Article 15(2)<br>---<br>---|Article 16(5)<br>Article 16(6)<br>---<br>Article 46(1) to (3)<br>Article 44(1)<br>Article 17<br>Articles 17, 44(2) and Article 46(4)<br>Article 18<br>Article 19(1)<br>Article 19(2)<br>Article 19(3)<br>Article 20<br>Article 7 and Article 21<br>Article 6<br>Articles 22 to 24<br>Article 26<br>Article 27<br>Article 28(1) and (3)<br>Article 28(4)<br>Article 28(2) and (5)<br>Articles 29 to 54(1)|

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# ANNEX DGG 3B EN

|Directive 2008/95/EC|This Directive|
|---|---|
|Article 16<br>Article 17<br>Article 18<br>Article 19|Article 54(2)<br>Article 55<br>Article 56<br>Article 57|

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# ANNEX DGG 3B EN