CELEX: 51980PC0635(01)
Language: en
Date: 1980-11-19
Title: Proposal for a first Council Directive to approximate the laws of the Member States relating to trade marks

31. 12. 80                       Official Journal of the European Communities                             No C 351/1
                                                          II
                                                  (Preparatory Acts)
                                            COMMISSION
              Proposal for a first Council Directive to approximate the laws of the Member States
                                               relating to trade marks
                      (Submitted by the Commission to the Council on 25 November 1980)
THE COUNCIL OF THE EUROPEAN                                    further, important not to disregard the solutions and
COMMUNITIES,                                                   advantages which the Community trade mark system
                                                               affords to undertakings wishing to acquire trade
Having regard to the Treaty establishing the                   marks. Under this system there is no point in
European Economic Community, and in particular                 requiring the Member States, inter alia, to authorize
Article 100 thereof,                                           the registration of additional categories of signs or to
Having regard        to   the   proposal    from     the       recognize service marks. For the same reason, there is
Commission,                                                    no justification for increasing the protection of
                                                               marks which enjoy a particular reputation;
Having regard to the opinion of the European
Parliament,                                                    this Directive excludes the application to trade marks
                                                               of other rules of law of the Member States, such as
Having regard to the opinion of the Economic and               the provisions relating to fair competition. Moreover,
Social Committee,                                              as it only partially approximates the laws of the
                                                               Member States, Article 36 of the Treaty continues to
Whereas:                                                       apply;
the trade marks laws at present applicable in the              attainment of the objectives at which this
Member States contain disparities which may                    approximation of laws is aiming requires that the
impede the free movement of goods and freedom to               conditions for obtaining and continuing to hold a
provide services, may distort competition within the           trade mark are, in general, identical in all Member
common market and may therefore directly affect the            States;
establishment and functioning of that market;
                                                               in order to reduce the total number of trade marks
it does not appear to be necessary at present to               registered and protected in the Community and,
undertake full-scale harmonization of the trade                consequently, the number of conflicts which arise
marks laws of the Member States. It will be sufficient         between them, it is essential that the trade marks be
if approximation is limited to those national                  actually used;
provisions of law which most directly affect free
movement of goods and services. It follows that this           the principal purpose of the directive is to ensure that
directive does not deprive Member States of the right          henceforth trade marks enjoy uniform protection
to continue to protect trade marks acquired through            under the legal systems of all the Member States;
use but takes them into account only in regard to the
relationship between them and trade marks acquired             the protection afforded by the trade marks is bound
by registration, the only marks which it covers. It is,        up with the concept of similarity of signs, similarity
 ---pagebreak--- No C 351/2                          Official Journal of the European Communities                             31. 12. 80
of goods and services and the possibility of confusion                                 Article 2
arising therefrom. The purpose of protection is to
guarantee the trade mark's function as an indicator            1. Trade marks shall be refused registration or shall
of origin. It is essential to give strict interpretation to    be invalidated if, on the date of application therefor,
the abovementioned concepts so as not to impede the            they consist of signs which, under the law of the
free movement of goods and the freedom to provide              Member State concerned, cannot constitute a trade
services beyond the limits required for the protection         mark or be held as such by the applicant, or if, on that
of trade marks. The current case-law in several of the         date, are devoid of distinctive character in a Member
Member States affords to trade marks a degree of               State, and in particular:
protection which is to some extent inconsistent with
the specific purpose of trade marks law. The directive         (a) those which consist solely of signs or indications
therefore requires that the case-law be examined. It is              which in trade may be requisite for the purpose
necessary, in particular, that by simultaneous                       of showing the kind, quality, quantity, intended
comparison of signs, goods and services it be certain                purpose, value, geographical origin, the time of
in each case that customers are likely to be confused                production of the goods or of rendering of the
as to the goods or services which are identified by the              service or other characteristics of the goods or
signs. Where a trade mark consists of several                        service, unless those marks have acquired
elements it must be considered in its entirety in                    distinctive character in consequence of the use
determining whether the sign which is alleged to                     made of them;
infringe it is so similar to it that the sign may be           (b) those which consist solely of signs or indications
confused with the trade mark. It is no longer possible,              which are customarily used to designate the
in determining whether, in a particular Member                       goods or service in the current language of the
State, two verbal signs are homophones or are, at any                trade or in the bona fide and established
rate, phonetically similar, to disregard the existence               practices thereof.
of the Community and the fact that the public is
increasingly aware of the correct pronunciation of
words in the languages which are spoken therein;
                                                                2. Trade marks shall also be refused registration or
 the function of indicating origin which is fulfilled by        shall be invalidated if, on the date of application
 a trade mark implies that it is not, in principle,             therefor,
 possible to prohibit its use by a third party in respect
 of goods marketed within or outside the Community              (a) they consist of a shape which is determined by
under the trade mark by the proprietor or with his                   the nature of the goods or which has some
 consent, or to prohibit its use, for reasons based on               technical consequence, or they consist of the
 trade mark law, by a licensee supplying goods or                    shape of the goods and this affects their intrinsic
 providing services under the trade mark outside the                 value, to the extent that, in the Member State
territory covered by the licence.                                    concerned, a shape may constitute a trade
Whereas it is necessary for the functioning of the                   mark;
common market to approximate national procedural                (b) they include signs or indications liable to
rules only insofar as this will contribute to the                    mislead the public, particularly as to the nature,
settlement of disputes between the proprietors of                    quality or geographical origin of the goods or
trade marks or between the latter and holders of                     services;
other private rights; whereas, for the present,
                                                                (c) they are contrary to public order or to accepted
provision is made for an amicable settlement
                                                                     principles of morality or are covered by Article 6
procedure only; whereas it may, however, be proper                   ter of the Paris Convention for the Protection of
at some later stage, depending in particular on the                   Industrial Property, hereinafter referred to as
 degree of integration then achieved by the                          the 'Paris Convention'.
 Community, to contemplate new measures which
 would enable such conflicts to be resolved more
 easily.                                                        3. A trade mark shall also be invalidated where the
 HAS ADOPTED THIS DIRECTIVE:                                    goods for which it is registered in the Member State
                                                                concerned has been marketed in another Member
                          Article 1                             State under another trade mark by the proprietor or
 This Directive applies to every trade mark in respect          with his consent, unless there are legitimate grounds
 of goods or services which is the subject of an                which justify the use of different marks for those
 application in a Member State for registration as an           goods in those Member States; but this provision
 individual trade mark, a collective mark or a                  shall not apply if the proprietor decides to surrender,
 guarantee mark, or which is the subject of an                  in respect of the goods in question, the trade mark
 international registration having effect in a Member           that exists in the other Member State and furnishes
 State.                                                         proof, within the period laid down by the authority to
 ---pagebreak---   31. 12. 80                        Official Journal of the European Communities                             No C 351/3
  which the application for invalidation is submitted,                origin, the time of production of the goods or of
 that the trade mark has been properly surrendered.                   rendering of the service or other characteristics
                                                                      of the goods or service;
 4. Trade marks for which application has been
 made prior to the date laid down in Article 18 (1) or          (c) the trade mark for the purpose of indicating the
 which are registered before that date shall be                      intended purpose of accessories or spare parts,
 invalidated if any of the grounds specified in
 paragraph 1 to 3 apply to them.                               provided he does not use them as a trade mark.
                          Article 3
                                                                                        Article 6
 1. The trade mark confers on the proprietor thereof
 an exclusive right. That right entitles him to prohibit        1. The trade mark shall not entitle the proprietor
 any third party from using, without his consent, and          thereof to prohibit its use in relating to goods which
 in the course of trade a sign which is identical with or      have been put on the market under that trade mark
 similar to the trade mark in relation to goods or             by the proprietor or with his consent.
 services identical with or similar to those in respect of
                                                               2. Paragraph (1) shall not apply:
 which application was made, where such use creates
 a serious likelihood of confusion on the part of the          (a) where there are legitimate grounds for opposing
 public;                                                             imporation into the Community of goods put on
                                                                     the market outside it;
 2. Where the conditions specified in paragraph 1
 are satisfied, the following types of use, in particular,     (b) where the condition of the goods is changed or
 may be prohibited:                                                  impaired after they have been put on the
(a) affixing the sign to the goods or to the packaging               market;
      thereof;                                                 (c) where the goods are repackaged by a third
(b) putting the goods on the market under that sign,                 party.
      or supplying services thereunder;
(c) using the sign on business correspondence or
      invoices.                                                                         Article 7
 3. The Member States shall determine under what              The trade mark may be invoked against a licensee
 conditions compensation may be obtained for loss or          only if he contravenes a limitation with regard to a
damage caused by the acts mentioned in                        part of the goods or services in respect of which
paragraph 1, and the rules of procedure which are to          application has been made for registration of the
 apply.                                                       trade mark, or contravenes the proprietor's
                                                              instructions concerning the quality of the goods or
                         Article 4                            services.
1. The publisher of a dictionary, encyclopaedia or
similar work shall ensure that any reproduction of a
                                                                                        Article 8
trade mark therein is accompanied by an indication
that an application has been made for registration of
the trade mark.                                                1. A trade mark shall be refused registration or shall
                                                              be invalidated:
2. Where the publisher fails to comply with the
requirements of paragraph (1) he shall, at the request        (a) on the ground that an earlier trade mark exists
of the proprietor of the trade mark, correct the matter             where those marks are likely to create confusion
at his own expense in the next edition of the                       within the meaning of Article 3 (1);
publication.                                                  (b) on the ground that some other exclusive prior
                                                                    right exists, where there is a serious likelihood of
                         Article 5                                  confusion on the part of the public between the
                                                                    trade mark and that right, unless the latter is a
The trade mark shall not entitle the proprietor                     portrait, a surname or a work protected by
thereof to prohibit a third party from using, in the                copyright or by an industrial design or model.
course of trade:
(a) his surname or address;                                   2. Paragraph (1) (b) shall also apply to prohibition
(b) indications concerning the kind, quality,                 of the use of a trade mark based on the existence of
      quantity, intended purpose, value, geographical         another exclusive prior right.
 ---pagebreak--- No C 351/4                         Official Journal of the European Communities                             31. 12. 80
                         Article 9                            4. In relation to trade marks for which application
                                                              was made in the Member State concerned before the
 1. Where, in the course of proceedings to oppose             date laid down in Article 18 (1), the provisions of this
registration of a trade mark or to invalidate a trade         Article shall apply with effect from that date only.
mark or to prohibit the use of a trade mark, the
authority seised of the matter considers that the                                    Article 12
conflict between that trade mark and another trade
mark or other right is capable of being resolved              Where the law of a Member State provides that the
amicably, it shall submit proposals to the parties for        existence of a trade mark may be averred in
the purpose of imposing conditions on the use of the          opposition to the registration of a later trade mark, it
trade mark or of the other right in such manner that          shall provide that, at the request of the applicant for
there will be no serious likelihood of confusion on           registration or the competent authority, the party
the part of the public.                                       opposing registration shall furnish proof that the
                                                              earlier trade mark has been used in the manner
2. Where the proprietor of the trade mark or of the           required by Article 11 during the five years preceding
other right is not party to the proceedings, the              publication of the application for the later trade
authority seised of the matter may order that he be           mark, on condition that on that date the earlier trade
summoned.                                                     mark has been registered for not less than five years.
                                                              In the absence of such proof, the opposition shall be
                                                              rejected. Where the earlier trade mark has been used
                        Article 10                            only in respect of part of the goods or services for
                                                              which it was registered, it shall, for the purposes of
1. Where the proprietor of a trade mark or other              examining the opposition, be deemed to be registered
exclusive right has for three consecutive years               in respect only of that part of the goods or
acquiesced in the use in a Member State of a later            services.
trade mark which is likely to create confusion with
his trade mark or right, he shall not be entitled to                                 Article 13
apply for invalidation of the later trade mark or
cause its use to be prohibited in that Member State or        1. Renewal of registration of a trade mark shall be
in another Member State except where the                      subject to the production of a declaration of user,
application for the later trade mark was made in bad          indicating the goods or services in respect of which
faith.                                                        the trade mark has been used in manner required by
                                                              Article 11 during the five years preceding expiry of
2. Paragraph (1) shall be without prejudice to the            the registration.
right of the proprietor of a trade mark which is well
known in a Member State within the meaning of                 2. Where the declaration of use is produced in
Article 6 bis of the Paris Convention to apply for the        respect of only part of the goods or services for which
invalidation of a later trade mark or to cause its use to     the trade mark is registered, registration shall be
be prohibited in that State, within five years after the      renewed only for that part of the goods or services.
date of registration of the later trade mark.
                                                              3. The laws of the Member States shall determine
                                                              the procedure for presenting the declaration of user
                                                              and the penalties applicable where a false declaration
                                                              is made.
                        Article 11
                                                                                     Article 14
 1. A trade mark shall be put to serious use in the
 Member State concerned, consistently with the terms          1. A trade mark shall be invalidated if it has not
of this Directive, in connection with the goods or           been used in the manner required by Article 11 for an
services in respect of which it is registered, unless        unbroken period of five years; but a trade mark is not
there exist legitimate reasons for not doing so.             to be invalidated where, between the expiry of that
                                                             period and the date on which the validity of the trade
 2. Circumstances arising independently of the will          mark is contested, it has been used in good faith and
 of the proprietor of a trade mark are alone sufficient      in the manner required by Article 11.
to constitute legitimate reasons for not using it.
                                                              2. A trade mark shall also be invalidated if, after the
 3. Use of a trade mark by a licensee, by a person            date on which it was registered:
 who is associated economically with the proprietor or
by a person who is entitled to use a collective mark or       (a) it has become, in consequence of acts of the
guarantee mark shall be deemed to constitute use by                proprietor, the common name for a product or
the proprietor.                                                    service in respect whereof it is registered;
 ---pagebreak--- 31. 12. 80                           Official Journal of the European Communities                         No C 351/5
(b) it is liable, in consequence of the use made of it                                Article 17
       in respect of the goods or services for which it is
       registered, to mislead the public, particularly as       The laws of the Member States shall determine the
       to the nature, quality or geographical origin of         procedure for registration and for invalidation of
       those goods or services.                                trade marks and the effects of invalidation. They may
                                                                further provide that a trade mark to which one of the
                                                               grounds for invalidation mentioned in this Directive
                                                               applies shall not be capable of defeating the claims of
                            Article 15                         third parties.
Where a ground for refusal of registration or for                                    Article 18
invalidation of a trade mark exists in respect of only
part of the goods or services for which that mark has           1. The Member States shall bring into force the
been applied for or registered, refusal of registration         laws, regulations and administrative provisions
or invalidation shall cover only the goods or services         necessary to comply with this Directive not later
concerned.                                                     than...
                                                               They shall immediately inform the Commission
                                                               thereof.
                          Article 16
                                                               2. The Member States shall communicate to the
Without prejudice to Article 8, Member States whose            Commission the text of the main provisions of
laws authorize the registration of collective marks or         national law which they adopt in the field governed
guarantee marks may provide that such marks be                 by this Directive.
refused registration, or shall be invalidated, on other
grounds than those specified in Article 2 and 14                                      Article 19
where the function of those marks so requires.                 This Directive is addressed to the Member States.
                             Proposal for a Council Regulation on Community trade marks
                        (Submitted by the Commission to the Council on 25 November 1980)
THE COUNCIL OF THE EUROPEAN                                    those obtaining in a national market. In order to
COMMUNITIES                                                    create a market of this kind and make it increasingly
                                                               a single market, not only must the barriers to free
Having regard to the Treaty establishing the                   movement of goods and services be removed and
European Economic Community, and in particular                 arrangements be instituted which ensure that
Article 235 thereof,                                           competition is not distorted, but, in addition, legal
                                                               conditions must be created which enable
Having regard          to   the    proposal    from   the      undertakings to adapt their activities to the scale of
Commission,                                                    the Community, whether in manufacturing and
Having regard to the opinion of the European                   distributing goods or in providing services. For those
                                                               purposes, trade marks enabling the products and
Parliament,
                                                               services of undertakings to be distinguished by
Having regard to the opinion of the Economic and               identical means troughout the entire Community,
Social Committee,                                              regardless of frontiers, should feature amongst the
                                                               legal instruments which undertakings have at their
Whereas:                                                       disposal;
it is desirable to promote throughout the Community            action by the Community would appear to be
a harmonious development of economic activities                necessary for the purpose of attaining the
and a continuous and balanced expansion by                     Community's said objectives. Such action involves
establishing a common market which functions                   the creation of Community arrangements for trade
properly and offers conditions which are similar to            marks whereby undertakings can by means of one