DIRECTIVE (EU)
2015/2436 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL
of 16 December
2015
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,
Whereas:
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(1)
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A number of amendments should be made to Directive 2008/95/EC of the
European Parliament and of the Council (3). In the interests of clarity, that Directive should be recast.
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(2)
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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.
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(3)
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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 (4). 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.
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(4)
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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.
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(5)
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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.
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(6)
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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.
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(7)
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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)
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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.
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(9)
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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.
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(10)
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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.
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(11)
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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)
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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.
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(13)
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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.
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(14)
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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)
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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.
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(16)
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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 corresponding 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)
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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’).
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(18)
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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.
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(19)
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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.
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(20)
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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 (5).
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(21)
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In order to
strengthen trade mark protection and combat counterfeiting more effectively,
and in line with international obligations of the Member States under the
World Trade Organisation (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.
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(22)
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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 (6), 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.
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(23)
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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.
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(24)
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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.
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(25)
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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.
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(26)
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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 such affixing.
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(27)
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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.
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(28)
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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)
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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.
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(30)
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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.
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(31)
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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)
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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 his
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.
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(33)
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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.
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(34)
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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.
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(35)
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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)
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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.
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(37)
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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 a term. In the interest of clarity
and legal certainty, the Member States' central industrial property offices
and the Benelux Office for Intellectual Property 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.
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(38)
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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 trademarks or declaring them invalid, 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)
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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.
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(40)
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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.
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(41)
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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)
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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 its scale and 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.
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(43)
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Directive 95/46/EC of the European Parliament and of the Council (7) governs the processing of personal data carried out in the Member
States in the context of this Directive.
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(44)
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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 (8) and delivered an opinion on 11 July 2013.
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(45)
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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.
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(46)
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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 Council Directive 89/104/EEC (9) into national law as set out in Part B of Annex I to Directive
2008/95/EC,
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HAVE ADOPTED
THIS DIRECTIVE:
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:
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(a)
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‘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;
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(b)
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‘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:
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(a)
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distinguishing
the goods or services of one undertaking from those of other undertakings;
and
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(b)
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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:
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(a)
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signs which
cannot constitute a trade mark;
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(b)
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trade marks
which are devoid of any distinctive character;
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(c)
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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;
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(d)
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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;
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(e)
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signs which
consist exclusively of:
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(f)
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trade marks
which are contrary to public policy or to accepted principles of morality;
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(g)
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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;
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(h)
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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;
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(i)
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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;
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(j)
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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;
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(k)
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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)
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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 which are in respect of plant varieties of the
same or closely related species.
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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:
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(a)
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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;
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(b)
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the trade mark
includes a sign of high symbolic value, in particular a religious symbol;
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(c)
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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:
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(a)
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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;
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(b)
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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:
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(a)
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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:
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(b)
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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;
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(c)
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applications
for the trade marks referred to in points (a) and (b), subject to their
registration;
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(d)
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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:
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(a)
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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 an 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;
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(b)
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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;
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(c)
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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:
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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:
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(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;
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|
(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:
|
|
(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.
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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. Any
Member State may provide that, by way of 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 Directive 89/104/EEC are to apply to trade marks for which an 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.
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 trade 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:
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(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 as referred to in Article
4(4);
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(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);
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(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.
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:
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(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;
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(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:
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(a)
|
affixing the
sign to the goods or to the packaging thereof;
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(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;
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(c)
|
importing or
exporting the goods under the sign;
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(d)
|
using the sign
as a trade or company name or part of a trade or company name;
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(e)
|
using the sign
on business papers and in advertising;
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(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 the packaging thereof, 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.
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:
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(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 to
which the mark may be affixed;
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(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 to which the mark is affixed.
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Article 12
Reproduction of
trade marks in dictionaries
If the
reproduction of a trade mark in a dictionary, encyclopaedia or similar
reference work, 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.
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 do either or both of the following:
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(a)
|
oppose the use
of the trade mark by his agent or representative;
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(b)
|
demand the
assignment of the trade mark in his favour.
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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:
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(a)
|
the name or
address of the third party, where that third party is a natural person;
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(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.
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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.
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.
4. The
date of commencement of the five-year period, as 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:
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(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;
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|
(b)
|
affixing of
the trade mark to goods or to the packaging thereof in the Member State
concerned solely for export purposes.
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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.
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.
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 the 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:
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(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.
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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.
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.
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:
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(a)
|
its duration;
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(b)
|
the form
covered by the registration in which the trade mark may be used;
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|
(c)
|
the scope of
the goods or services for which the licence is granted;
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|
(d)
|
the territory
in which the trade mark may be affixed; or
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|
(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
Applications for
a trade mark as an object of property
Articles 22 to
25 shall apply to applications for trade marks.
SECTION 6
Guarantee or certification marks and collective marks
Article 27
Definitions
For the purposes
of this Directive, the following definitions apply:
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(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;
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|
(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.
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Article 28
Guarantee or
certification marks
1. Member
States may provide for the registration of guarantee or certification marks.
2. Any
natural or legal person, including institutions, authorities and bodies
governed by public law, may apply for guarantee or certification marks provided
that such 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.
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.
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 provisions of point (b) of Article
27, Article 29 or Article 30 are not satisfied, or where the regulations
governing use of that collective mark 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 of the collective mark, meets the requirements
referred to in paragraphs 1 and 2.
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
Amendments 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.
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:
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(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);
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|
(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;
|
|
(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 as 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’).
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.
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.
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.
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 as 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 as 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.
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.
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:
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(a)
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the trade mark
should not have been registered because it does not comply with the
requirements provided for in Article 4;
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(b)
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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).
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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:
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(a)
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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)
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in the case of
paragraph 3(b) of this Article, the proprietor of an earlier trade mark as
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 as referred to in Article
5(3)(c).
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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 a
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.
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, an 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.
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.
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.
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 that, the request may be submitted within a further
period of six months immediately 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.
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.
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 14 January
2019. Member States shall bring into force the laws, regulations and
administrative provisions to comply with Article 45 by 14 January 2023.
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.
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 15 January 2019, 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.
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 15 January 2019.
Article 57
Addressees
This Directive
is addressed to the Member States.
Done at Strasbourg, 16 December 2015.
For the European Parliament
The President
M. SCHULZ
For the Council
The President
N. SCHMIT
(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 15 December 2015.
(3) 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).
(4) Council Regulation (EC) No 207/2009 of 26 February 2009 on the
Community trade mark (OJ L 78, 24.3.2009, p. 1).
(5) 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).
(6) 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).
(7) 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).
(8) 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).
(9) 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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