CELEX: 51985PC0793
Language: en
Date: 1985-12-17
Title: AMENDED PROPOSAL FOR A FIRST COUNCIL DIRECTIVE TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADE MARKS

No C 351/4                               Official Journal of the European Communities                                    31. 12. 85
                                                                  II
                                                          (Preparatory Acts)
                                                     COMMISSION
               Amended proposal for a first Council Directive to approximate the laws of the Member States
                                                     relating to trade-marks (*)
                                                         COM(85) 793 final
                      (Submitted by the Commission to the Council pursuant to the second paragraph of
                                      Article 149 of the EEC Treaty on 17 December 1985)
                                                            (85/C 351/05)
                        ORIGINAL PROPOSAL                                                     AMENDED PROPOSAL
THE COUNCIL OF THE EUROPEAN COMMUNITIES,                              THE COUNCIL OF THE EUROPEAN COMMUNITIES,
Having regard to the Treaty establishing the European                 Unchanged
Economic Community, and in particular Article 100
thereof,
Having regard to the proposal from the Commission,                    Having regard to the proposal from the Commission (2),
Having regard to the opinion of the European Parliament,              Having regard to the opinion of the European Parlia-
                                                                      ment (3),
Having regard to the opinion of the Economic and Social               Having regard to the opinion of the Economic and Social
Committee,                                                            Committee (4),
Whereas:                                                              Whereas:
The trade-mark laws at present applicable in the Member               Unchanged
States contain disparities which may impede the free
movement of goods and freedom to provide services, may
distort competition within the common market and may
therefore directly affect the establishment and functioning
of that market.
It does not appear to be necessary at present to undertake            It does not appear to be necessary at present to undertake
full-scale harmonization of the trade-mark laws of the                full-scale harmonization of the trade-mark laws of the
Member States. It will be sufficient if approximation is              Member States. It will be sufficient if approximation is
limited to those national provisions of law which most                limited to those national provisions of law which most
directly affect free movement of goods and services. It               directly affect free movement of goods and services. This
follows that this Directive does not deprive Member States            Directive does not deprive Member States of the right to
of the right to continue to protect trade-marks acquired              continue to protect trade-marks acquired through use but
through use but takes them into account only in regard to             takes them into account only in regard to the relationship
the relationship between them and trade-marks acquired                between them and trade-marks acquired by registration. It
by registration, the only marks which it covers. It is,               is, further, important not to disregard the solutions and
further, important not to disregard the solutions and                 advantages which the Community trade-mark system
advantages which the Community trade-mark system                      affords to undertakings wishing to acquire trade-marks.
affords to undertakings wishing to acquire trade-marks.               Under this system there is no point in requiring the Member
Under this system there is no point in requiring the Member           States, inter alia, to authorize the registration of additional
States, inter alia, to authorize the registration of additional       categories of signs or to recognize service marks.
categories of signs or to recognize service marks. For the
same reason, there is no justification for increasing the
protection of marks which enjoy a particular reputation.
(!) OJ No C 351, 10. 12. 1980, p. 1.                                  (2) OJ No C 351, 31. 12. 1980, p. 1.
                                                                      (3) OJ No C 307, 14. 11. 1983, p. 60.
                                                                      (4) OJ No C 310, 30. 11. 1981, p. 22.
 ---pagebreak--- 31. 12. 85                                Official Journal of the European Communities                                  No C 351/5
                        ORIGINAL PROPOSAL                                                   AMENDED PROPOSAL
This Directive excludes the application to trade-marks of            This Directive does not exclude the application to trade-
other rules of law of the Member States, such as the                 marks of other rules of law of the Member States such as
provisions relating to fair competition. Moreover, as it only        the provisions relating to fair competition. Moreover, as it
partially approximates the laws of the Member States,                only partially approximates the laws of the Member States,
Article 36 of the Treaty continues to apply.                         Article 36 of the Treaty continues to apply.
Attainment of the objectives at which this approximation             Attainment of the objectives at which this approximation
of laws is aiming requires that the conditions for obtaining         of laws is aiming requires that the conditions for obtaining
and continuing to hold a trade-mark are, in general,                 and continuing to hold a registered trade-mark are, in
identical in all Member States.                                      general, identical in all Member States.
In order to reduce the total number of trade-marks                   In order to reduce the        total number of trade-marks
registered and protected in the Community and, con-                  registered and protected      in the Community and, con-
sequently, the number of conflicts which arise between               sequently, the number of       conflicts which arise between
them, it is essential that the trade-marks be actually used.         them, it is essential that     the registered trade-marks be
                                                                     actually used.
The principal purpose of the Directive is to ensure that             The principal purpose of the Directive is to ensure that
henceforth trade-marks enjoy uniform protection under                henceforth registered trade-marks enjoy uniform protec-
the legal systems of all the Member States.                          tion under the legal systems of all the Member States.
The protection afforded by the trade-mark is bound up                The protection afforded by the registered trade-mark is
with the concept of similarity of signs, similarity of goods         bound up with the concept of similarity of a sign and the
and services and the possibility of confusion arising                goods and services in connection with which it is used, to
therefrom. The purpose of protection is to guarantee the             the registered trade-mark and the goods or services for
trade-mark's function as an indicator of origin. It is               which it is registered, and with the possibility of confusion
essential to give strict interpretation to the abovementioned        between the sign and the registered trade-mark. The
concepts so as not to impede the free movement of goods              purpose of protection is to guarantee the trade-mark's
and the freedom to provide services beyond the limits                function as an indicator of origin. It is essential to give strict
required for the protection of trade-marks. The current              interpretation to the abovementioned concepts so as not to
case law in several of the Member States affords to trade-           impede the free movement of goods and the freedom to
marks a degree of protection which is to some extent                 provide services beyond the limits required for the
inconsistent with the specific purpose of trade-mark law.            protection of registered trade-marks. The current case law
The Directive therefore requires that the case law be                in several of the Member States affords to trade-marks
examined. It is necessary, in particular, that by simul-             degrees of protection which may to some extent go beyond
taneous comparison of signs, goods and services it be                the specific subject matter of trade-marks. The Directive
certain in each case that customers are likely to be confused        therefore requires that the case law be examined. It is
as to the goods or services which are identified by the signs.       necessary, in particular, by simultaneous comparison of the
Where a trade-mark consists of several elements, it must be          sign and the goods or services in connection with which it is
considered in its entirety in determining whether the sign           used and the registered trade-mark and the goods or
which is alleged to infringe it is so similar to it that the sign    services for which it is registered, to establish clearly in each
may be confused with the trade-mark. It is no longer                 case that customers are likely to be confused as to the sign
possible, in determining whether, in a particular Member             and the goods and services which are identified by the sign
State, two verbal signs are homophones or are, at any rate,          on the one hand and the registered trade-mark and the
phonetically similar, to disregard the existence of the              goods or services for which it is registered on the other.
Community and the fact that the public is increasingly               Where a trade-mark consists of several elements it must be
aware of the correct pronunciation of words in the                   considered in its entirety in determining whether the sign
languages which are spoken therein.                                  which is alleged to infringe it is so similar to the registered
                                                                     trade-mark that it is clear that the sign is likely to be
                                                                     confused with the registered trade-mark. It is no longer
                                                                     possible, in determining whether, in a particular Member
                                                                     State, two verbal signs are homophones or are, at any rate,
                                                                     phonetically similar, to disregard the existence 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.
 ---pagebreak--- No C 351/6                                Official Journal of the European Communities                                  31. 12. 85
                       ORIGINAL PROPOSAL                                                    AMENDED PROPOSAL
The function of indicating origin which is fulfilled by a            It follows from the principle of free flow of goods that the
trade-mark implies that it is not, in principle, possible to         proprietor of a registered trade-mark must not be entitled
prohibit its use by a third party in respect of goods                to prohibit its use by a third party in relation to goods
marketed within or outside the Community under the                   which have been put on the market in the Community,
trade-mark by the proprietor or with his consent, or to              under that trade-mark, by him or with his consent, nor to
prohibit its use, for reasons based on trade-mark law, by a          prohibit its use, for reasons based on trade-mark law, by a
licensee supplying goods or providing services under the             licensee who supplies the goods or services under the trade-
trade-mark outside the territory covered by the licence.             mark outside the territory covered by the licence.
It is necessary for the functioning of the common market to          It is necessary for the functioning of the common market to
approximate national procedural rules only in so far as this         approximate national procedural rules only in so far as this
will contribute to the settlement of disputes between the            will contribute to the settlement of disputes between the
proprietors of trade-marks or between the latter and                 proprietors of trade-marks or between the latter and
holders of other private rights. For the present, provision is       holders of other private rights. Consequently, provision is
made for an amicable settlement procedure only. It may,              made for an amicable settlement procedure only.
however, be proper at some later stage, depending in
particular on the degree of integration then achieved by the
Community, to contemplate new measures which would
enable such conflicts to be resolved more easily.
HAS ADOPTED THIS DIRECTIVE:                                          HAS ADOPTED THIS DIRECTIVE:
                            Article 1                                                            Article 1
This Directive applies to every trade-mark in respect of             This Directive applies to every trade-mark in respect of
goods or services which is the subject of an application in a        goods or services which is the subject of registration or of
Member State for registration as an individual trade-mark,           an application in a Member State for registration as an
a collective mark or a guarantee mark, or which is the               individual trade-mark, a collective mark or a guarantee
subject of an international registration having effect in a          mark, or which is the subject of an international
Member State.                                                        registration having effect in a Member State.
                            Article 2                                                            Article 2
1.      Trade-marks shall be refused registration or shall be        1.     Trade-marks shall be refused registration or shall be
invalidated if, on the date of application therefor, they            invalidated if, on the date of application therefor, they
consist of signs which, under the law of the Member State            consist of signs which, under the law of the Member State
concerned, cannot constitute a trade-mark or be held as              concerned, cannot constitute a trade-mark or be held as
such by the applicant, or if, on that date, they are devoid of       such by the applicant, or if, on that date, they are devoid of
distinctive character in a Member State, and in particular:          distinctive character in that Member State, and in
                                                                     particular:
(a) those which consist solely of signs or indications which         (a) Unchanged.
      in trade may be requisite for the purpose of showing the
      kind, quality, quantity, intended purpose, value,
      geographical origin, the time of production of the
      goods or of rendering of the service or other
      characteristics of the goods or service, unless those
      marks have acquired distinctive character in con-
      sequence of the use made of them;
(b) those which consist solely of signs or indications which         (b) Unchanged.
      are customarily used to designate the goods or service
      in the current language of the trade or in the bona fide
      and established practices thereof.
2.      Trade-marks shall also be refused registration or shall      2.     Trade-marks shall also be refused registration or shall
be invalidated if, on the date of application therefor,              be invalidated if, on the date of applicaton therefor,
 ---pagebreak--- 31. 12. 85                                Official Journal of the European Communities                               No C 351/7
                       ORIGINAL PROPOSAL                                                   AMENDED PROPOSAL
(a) they consist of a shape which is determined by the               (a) Unchanged,
     nature of the goods or which has some technical
     consequence, or they consist of the shape of the goods
     and this affects their intrinsic value, to the extent that,
     in the Member State concerned, a shape may constitute
     a trade-mark;
(b) they include signs or indications liable to mislead the          (b) they are liable to mislead the public, particularly as to
     public, particularly as to the nature, quality or                   the nature, quality or geographical origin of the goods
     geographical origin of the goods or services;                       or services;
(c) they are contrary to public order or to accepted                 (c) they are contrary to public policy or to accepted
     principles of morality or are covered by Article 6 ter of           principles of morality, or have not been authorized by
     the Paris Convention for the Protection of Industrial               the competent authorities and are to be refused or
     Property, hereinafter referred to as the 'Paris Con-                invalidated pursuant to Article 6 ter of the Paris
     vention'.                                                           Convention for the Protection of Industrial Property,
                                                                         hereinafter referred to as the 'Paris Convention'.
3.     A trade-mark shall also be invalidated where the             '.     Deleted.
goods for which it is registered in the Member State
concerned have been marketed in another Member State
under another trade-mark by the proprietor or with his
consent, unless there are legitimate grounds which justify
the use of different marks for those goods in those Member
States; but this provision shall not apply if the proprietor
decides to surrender, in respect of the goods in question, the
trade-mark that exists in the other Member State and
furnishes proof, within the period laid down by the
authority to which the application for invalidation is
submitted, that the trade-mark has been properly sur-
rendered.
4.     Trade-marks for which application has been made               4.    Deleted,
prior to the date laid down in Article 18 (1) or which are
registered before that date shall be invalidated if any of the
grounds specified in paragraphs 1 to 3 apply to them.
                            Article 3                                                          Article 3
1.     The trade-mark confers on the proprietor thereof an           1.    The registered trade-mark confers on the proprietor
exclusive right. That right entitles him to prohibit any third       exclusive rights therein. The proprietor shall be entitled to
party from using, without his consent, in the course of trade        prohibit any third party from using in the course of trade,
a sign which is identical with or similar to the trade-mark in       save with his consent:
relation to goods or services identical with or similar to
those in respect of which application was made, where such
use creates a serious likelihood of confusion on the part of
the public.
                                                                     (a) any sign which is identical with the trade-mark in
                                                                         relation to goods or services which are identical with
                                                                         those for which the trade-mark is registered;
                                                                     (b) any sign which is identical with the trade-mark in
                                                                         relation to goods or services which are similar to those
                                                                         for which the trade-mark is registered, where, because
                                                                         of the similarity of the goods or services, such use
                                                                         involves a likelihood of confusion between the sign and
                                                                         the trade-mark on the part of the public;
                                                                     (c) any sign which is similar to the trade-mark in relation
                                                                         to goods or services which are identical with or similar
                                                                         to those for which the trade-mark is registered, where,
                                                                         because of the similarity of the sign and the identity or
                                                                         similarity of the goods or services, such use involves a
                                                                         likelihood of confusion between the sign and the trade-
                                                                         mark on the part of the public.
 ---pagebreak--- No C 351/8                              Official Journal of the European Communities                                31. 12. 85
                      ORIGINAL PROPOSAL                                                  AMENDED PROPOSAL
2.     Where the conditions specified in paragraph 1 are           2.     Where the conditions specified in paragraph 1 are
satisfied, the following types of use, in particular, may be       satisfied, the following in particular may be prohibited:
prohibited:
(a) affixing the sign to the goods or to the packaging             (a) Unchanged.
     thereof;
(b) putting the goods on the market under that sign, or            (b) Unchanged.
     supplying services thereunder;
(c) using the sign on business correspondence or invoices.         (c) Using the sign on business papers.
3.     The Member States shall determine under what                3.     Unchanged.
conditions compensation may be obtained for loss or
damage caused by the acts mentioned in paragraph 1, and
the rules of procedure which are to apply.
                                                                   4.     Where, under the law of the Member State, the use of
                                                                   an identical or similar sign in relation to similar goods
                                                                   could not be prohibited before the date referred to in
                                                                   Article 18 (1), the rights conferred by the trade-mark may
                                                                   not be relied on to prevent the continued use of the sign in
                                                                   relation to the goods concerned.
                           Article 4                                                          Article 4
1.     The publisher of a dictionary, encyclopaedia or             1.     The publisher of a dictionary, encyclopaedia or
similar work shall ensure that any reproduction of a trade-        similar work shall ensure that any reproduction of a trade-
mark therein is accompanied by an indication that an               mark therein is accompanied by an indication that the
application has been made for registration of the trade-           trade-mark is registered, where the reproduction of this
mark.                                                              trade-mark in such works gives the impression that it
                                                                   constitutes the generic name of the goods or services for
                                                                   which the trade-mark is registered.
2.     Where the publisher fails to comply with the                2.     Unchanged.
requirements of paragraph 1 he shall, at the request of the
proprietor of the trade-mark, correct the matter at his own
expense in the next edition of the publication.
                           Article 5                                                          Article 5
The trade-mark shall not entitle the proprietor thereof to         The trade-mark shall not entitle the proprietor thereof to
prohibit a third party from using, in the course of trade,         prohibit a third party from using, in the course of trade,
(a) his surname or address;                                        (a) his own name and address;
(b) indications concerning the kind, quality, quantity,            (b) Unchanged.
     intended purpose, value, geographical origin, the time
     of production of the goods or of rendering of the service
     or other characteristics of the goods or service;
(c) the trade-mark for the purpose of indicating the               (c) the trade-mark where it is necessary to indicate the
     intended purpose of accessories or spare parts;                    intended purpose of a product or service, in particular
                                                                        accessories or spare parts,
provided he does not use them as a trade-mark.                     provided he uses them in accordance with honest industrial
                                                                   or commercial practice.
                           Article 6                                                          Article 6
1.     The trade-mark shall not entitle the proprietor             1.     The trade-mark shall not entitle the proprietor
thereof to prohibit its use in relation to goods which have        thereof to prohibit its use in relation to goods which have
been put on the market under that trade-mark by the                been put on the market in the Community under that trade-
proprietor or with his consent.                                    mark by the proprietor or with his consent.
 ---pagebreak--- 31. 12. 85                                Official Journal of the European Communities                                  No C 351/9
                      ORIGINAL PROPOSAL                                                      AMENDED PROPOSAL
2.    Paragraph 1 shall not apply:                                   2.     Paragraph 1 shall not apply where the condition of
                                                                     the goods is changed or impaired after they have been put
                                                                     on the market.
(a) where there are legitimate grounds for opposing                  (a) Deleted.
    importation into the Community of goods put on the
    market outside it;
(b) where the condition of the goods is changed or                   (b) Deleted.
    impaired after they have been put on the market;
(c) where the goods are repackaged by a third party.                 (c) Deleted.
                           Article 7                                                             Article 7
The trade-mark may be invoked against a licensee only if he          The rights conferred by a trade-mark may be invoked
contravenes a limitation with regard to a part of the goods          against a licensee only if he contravenes the limits on his
or services in respect of which application has been made            licence with regard to its duration or to the licensed scope
for registration of the trade-mark, or contravenes the               of the goods or services for which the trade-mark is
proprietor's instructions concerning the quality of the              registered or does not comply with the proprietor's
goods or services.                                                   instructions in respect of the quality of the goods or
                                                                     services.
                           Article 8                                                             Article 8
1.    A trade-mark shall be refused registration or shall be         1.     Unchanged.
invalidated:
(a) on the ground that an earlier trade-mark exists where            (a) if it is identical with an earlier right, and the goods or
    those marks are likely to create confusion within the                 services are identical with those for which the earlier
    meaning of Article 3 (1);                                             right was registered in the cases referred to in
                                                                          paragraph 2 (a) or (b), or has been used in the cases
                                                                          referred to in paragraph 2 (c) or (d);
(b) on the ground that some other exclusive prior right              (b) if it is identical with an earlier right, and the goods or
    exists, where there is a serious likelihood of confusion              services are similar to those for which the earlier right
    on the part of the public between the trade-mark and                  was registered in the cases referred to in paragraph 2
    that right, unless the latter is a portrait, a surname or a           (a) or (b) or has been used in the cases referred to in
    work protected by copyright or by an industrial design                paragraph 2 (c) or (d), with the result that there arises a
    or model.                                                             likelihood of confusion between the trade-mark
                                                                          applied for and the earlier right on the part of the public
                                                                          in the territory in which the earlier right has effect;
                                                                     (c) if it is similar to an earlier right, and the goods or
                                                                          services are identical with or similar to those for which
                                                                          the earlier right was registered in the cases referred to in
                                                                          paragraph 2 (a) or (b) or has been used in the cases
                                                                          referred to in paragraph 2 (c) or (d), with the result that
                                                                          there arises a likelihood of confusion between the
                                                                          trade-mark applied for and the earlier right on the part
                                                                          of the public in the territory in which the earlier right
                                                                          has effect.
2.    Paragraph 1 (b) shall also apply to prohibition of the         2.     An 'earlier right' means:
use of a trade-mark based on the existence of another
exclusive prior right.
                                                                      (a) trade-marks of the following kinds in respect of which
                                                                          the date of application for registration preceded the
                                                                          date of application for registration of the trade-mark,
                                                                          taking account, where appropriate, of the priorities
                                                                          claimed in respect of those trade-marks:
 ---pagebreak--- No C 351/10                             Official Journal of the European Communities                                 31. 12. 85
                      ORIGINAL PROPOSAL                                                   AMENDED PROPOSAL
                                                                        — Community trade-marks,
                                                                        — trade-marks registered in the Member State,
                                                                        — trade-marks registered under international ar-
                                                                            rangements which have effect in the Member State;
                                                                   (b) application for the trade-marks referred to in (a),
                                                                        subject to their registration;
                                                                   (c) trade-marks which, on the date of application for
                                                                        registration of the trade-mark, are well known in the
                                                                        Member State, in the sense in which the words 'well
                                                                        known' are used in Article 6b of the Paris Convention;
                                                                   (d) any signs used in the business world before the
                                                                        application for registration of the trade-mark which,
                                                                        under the law of the Member State governing them,
                                                                        confer on their proprietor the right to prohibit the use
                                                                        of subsequent trade-marks;
                                                                   (e) any signs containing:
                                                                        — the name of a third person, where use of this name
                                                                            in relation to the goods or services for which the
                                                                            trade-mark is applied for is liable to cause serious
                                                                            detriment to the honour, reputation or credit of
                                                                            that person,
                                                                        — a portrait of a third person,
                                                                        — a work of a third person protected by copyright or
                                                                            by an industrial model or design,
                                                                        so, however, that in any opposition, based on such a
                                                                        sign, to the registration of the trade-mark or in
                                                                        proceedings to invalidate the trade-mark the likelihood
                                                                        of confusion does not need to be established.
                           Article 9                                                          Article 9
1.    Where, in the course of proceedings to oppose                1.     Where, in the course of proceedings to oppose
registration of a trade-mark or to invalidate a trade-mark         registration of a trade-mark or to invalidate a trade-mark
or to prohibit the use of a trade-mark, the authority seized       or to prohibit the use of a trade-mark, the authority seized
of the matter considers that the conflict between that trade-      of the matter considers that the conflict between that trade-
mark and another trade-mark or other right is capable of           mark and another trade-mark or other right is capable of
being resolved amicably, it shall submit proposals to the          being resolved amicably, it shall submit proposals to the
parties for the purpose of imposing conditions on the use of       parties for the purpose of imposing conditions on the use of
the trade-mark or of the other right in such manner that           the trade-mark or of the other right in such manner that
there will be no serious likelihood of confusion on the part       there will be no likelihood of confusion on the part of the
of the public.                                                     public.
2.    Where the proprietor of the trade-mark or of the             2.     Unchanged.
other right is not party to the proceedings, the authority
seized of the matter may order that he be summoned.
                          Article 10                                                          Article 10
1.    Where the proprietor of a trade-mark or other                1.     Where, in a Member State, the proprietor of a
exclusive right has for three consecutive years acquiesced in      registered trade-mark or of any other earlier right referred
the use in a Member State of a later trade-mark which is           to in Article 8 (2) (a) to (d) has acquiesced in the use of a
likely to create confusion with his trade-mark or right, he        later registered trade-mark in that Member State for a
shall not be entitled to apply for invalidation of the later       period of three successive years, being aware of such use, he
trade-mark or cause its use to be prohibited in that Member        shall not be entitled either to apply for a declaration that
State or in another Member State except where the                  the later trade-mark is invalid or to oppose the use of the
application for the later trade-mark was made in bad faith.        later trade-mark in respect of the goods or services for
                                                                   which the later trade-mark has been used, unless the later
                                                                   trade-mark was applied for in bad faith.
 ---pagebreak--- 31. 12. 85                                Official Journal of the European Communities                                No C 351/11
                       ORIGINAL PROPOSAL                                                     AMENDED PROPOSAL
2.    Paragraph 1 shall be without prejudice to the right of                Unchanged.
the proprietor of a trade-mark which is well known in a
Member State within the meaning of Article 6 bis of the
Paris Convention to apply for the invalidation of a later
trade-mark or to cause its use to be prohibited in that State,
within five years after the date of registration of the later
trade-mark.
                           Article 11                                                           Article 11
1.    A trade-mark shall be put to serious use in the                1.     If, within a period of five years following registration,
Member State concerned, consistently with the terms of               the proprietor has not put the trade-mark to genuine use in
this Directive, in connection with the goods or services in          the Member State in connection with the goods or services
respect of which it is registered, unless there exist legitimate     in respect of which it is registered, or if such use has been
reasons for not doing so.                                            suspended during an uninterrupted period of five years, the
                                                                     trade-mark shall be subject to the sanctions provided for in
                                                                     this Directive, unless there exist legitimate reasons for non-
                                                                     use.
                                                                     The following shall also constitute use for the purposes 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;
                                                                     (b) affixing of the trade-mark to products or to packaging
                                                                          thereof in the Member State solely for export purposes.
2.    Circumstances arising independently of the will of the         2.     Unchanged.
proprietor of a trade-mark are alone sufficient to constitute
legitimate reasons for not using it.
3.    Use of a trade-mark by a licensee, by a person who is          3.     Use of the trade-mark with the consent of the
associated economically with the proprietor or by a person           proprietor or by a third party who is entitled to use a
who is entitled to use a collective mark or guarantee mark           collective mark or guarantee mark shall be deemed to
shall be deemed to constitute use by the proprietor.                 constitute use by the proprietor.
4.    In relation to trade-marks for which application was           4.      Unchanged.
made in the Member State concerned before the date laid
down in Article 18 (1), the provisions of this Article shall
apply with effect from that date only.
                           Article 12                                                            Article 12
"Where the law of a Member State provides that the                   Where the law of a Member State provides that the
existence of a trade-mark may be averred in opposition to            existence of a trade-mark may be averred in opposition to
the registration of a later trade-mark, it shall provide that,       the registration of a later trade-mark, it shall provide that,
at the request of the applicant for registration or the              at the request of the applicant for registration or the
competent authority, the party opposing registration shall           competent authority, the party opposing registration shall
furnish proof that the earlier trade-mark has been used in           furnish proof that, during the period of five years preceding
the manner required by Article 11 during the five years              the date of publication of the later trade-mark application,
preceding publication of the application for the later trade-        the earlier trade-mark has been put to genuine use in the
mark, on condition that on that date the earlier trade-mark          Member State in connection with the goods or services in
has been registered for not less than five years. In the             respect of which it is registered, or that there exist
absence of such proof, the opposition shall be rejected.             legitimate reasons for non-use, provided the earlier trade-
Where the earlier trade-mark has been used only in respect           mark has at that date been registered for not less than five
of part of the goods or services for which it was registered,        years. In the absence of proof to this effect, the opposition
it shall, for the purposes of examining the opposition, be           shall be rejected. If the earlier trade-mark has been used in
deemed to be registered in respect only of that part of the          relation to part only of the goods or services for which it is
goods or services.                                                   registered, it shall, for purposes of the examination of the
                                                                     opposition, be deemed to be registered in respect only of
                                                                     that part.
 ---pagebreak---  No C 351/12                              Official Journal of the European Communities                                 31. 12. 85
                       ORIGINAL PROPOSAL                                                    AMENDED PROPOSAL
                           Article 13                                                          Article 13
 1.    Renewal of registration of a trade-mark shall be              1.     Deleted,
subject to the production of a declaration of user,
indicating the goods or services in respect of which the
trade-mark has been used in a manner required by
Article 11 during the five years preceding expiry of the
registration.
2.     Where the declaration of user is produced in respect          2.     Deleted,
of only part of the goods or services for which the trade-
mark is registered, registration shall be renewed only for
that part of the goods or services.
3.     The laws of the Member States shall determine the             3.     Deleted,
procedure for presenting the declaration of user and the
penalties applicable where a false declaration is made.
                           Article 14                                                          Article 14
 1.    A trade-mark shall be invalidated if it has not been          1.    A trade-mark shall be invalidated if, within an
used in a manner required by Article 11 for an unbroken              uninterrupted period of five years, it has not been put to
period of five years; but a trade-mark is not to be                 genuine use in the Member State in connection with the
invalidated where, between the expiry of that period and            goods or services in respect of which it is registered, unless
the date on which the validity of the trade-mark is                  there exist legitimate reasons for non-use; but a trade-mark
contested it has been used in good faith and in a manner             shall not be invalidated where, after the expiry of that
required by Article 11.                                             period and before the date on which the validity of the
                                                                    trade-mark is contested, use of the trade-mark has been
                                                                     started or resumed in good faith.
2.     A trade-mark shall also be invalidated if, after the         2.      Unchanged.
date on which it was registered,
(a) it has become, in consequence of acts of the proprietor,         (a) in consequence of acts or inactivity of the proprietor, it
     the common name for a product or service in respect                  has become the common name in the trade for a
     whereof it is registered;                                            product or service in respect of which it is registered;
(b) it is liable, in consequence of the use made of it in            (b) Unchanged.
     respect of the goods or services for which it is
     registered, to mislead the public, particularly as to the
     nature, quality or geographical origin of those goods or
     services.
                           Article 15                                                          Article 15
Where a ground for refusal of registration or for                   Unchanged.
invalidation of a trade-mark exists in respect of only part of
the goods or services for which that mark has been applied
for or registered, refusal of registration or invalidation shall
cover only the goods or services concerned.
                           Article 16                                                          Article 16
Without prejudice to Article 8, Member States whose laws            Unchanged.
authorize the registration of collective marks or guarantee
marks may provide that such marks be refused registration,
or shall be invalidated, on other grounds than those
specified in Articles 2 and 14 where the function of those
marks so requires.
 ---pagebreak--- 31. 12. 85                                Official Journal of the European Communities                              No C 351/13
                       ORIGINAL PROPOSAL                                                   AMENDED PROPOSAL
                           Article 17                                                           Article 17
The laws of the Member State shall determine the                     Unchanged.
procedure for registration and for invalidation of 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 third parties.
                                                                                               Article 17a
                                                                     The symbol composed of a capital letter R contained
                                                                     within a circle, thus ® , may be used to indicate a registered
                                                                     trade-mark.
                          Article 18                                                           Article 18
1.     The Member States shall bring into force the laws,            1.    Unchanged.
regulations and administrative provisions necessary to
comply with this Directive not later than... They shall
immediately inform the Commission thereof.
2.     The Member States shall communicate to the                          Unchanged.
Commission the text of the main provisions of national law
which they adopt in the field governed by this Directive.
                          Article 19                                                           Article 19
This Directive is addressed to the Member States.                    Unchanged.
               Amended proposal for a Council Directive prohibiting the use in livestock farming of certain
                                              substances having a hormonal action (})
                                                        COM(85) 832 final
                     (Submitted by the Commission to the Council pursuant to the second paragraph of
                                      Article 149 of the EEC Treaty on 18 December 1985)
                                                           (85/C 351/06)
THE COUNCIL OF THE EUROPEAN COMMUNITIES,                             market organizations and is a serious barrier to intra-
                                                                     Community trade;
Having regard to the Treaty establishing the European
Economic Community, and in particular Article 43 thereof,
                                                                    Whereas this distortion of competition and barrier to trade
                                                                     should be removed by ensuring that all consumers should
Having regard to the proposal from the Commission,                   be able to buy the products in question under identical
                                                                     conditions of supply and these products should, to meet
Having regard to the opinion of the European Parliament,             their anxieties and expectations, be in the best possible
                                                                     state; whereas such a course of action is bound to bring
Having regard to the opinion of the Economic and Social              about an increase in consumption of the product in
Committee,                                                           question;
"Whereas the administration to farm animals of certain
                                                                    Whereas the use of hormonal substances for fattening
substances having a hormonal action is at present regulated
                                                                     purposes should therefore be prohibited; where the use of
in different ways in the Member States; whereas while their
                                                                    certain substances for therapeutic purposes may be
immediate effect on animals from the farmer's point of
                                                                    authorized but must be strictly controlled in order to
view is clear, assessments of their effect on human health
                                                                    prevent any misuse of them;
vary and this is reflected in the regulations governing their
use; whereas this divergence distorts the conditions of
competition in products that are the subject of common              Whereas, since it would be difficult to be certain of correct
                                                                    operation of the scheme as a whole if animals so treated and
(!) OJ No C 313, 4. 12. 1985, p. 4.                                 the meat from such animals were to be traded, this should