Approximation of the trade mark laws of the Member States

The aim of this Directive is to ensure that registered trade marks enjoy the same protection under the laws of all the Member States.

ACT

Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks. [See amending acts].

SUMMARY

The Directive applies to trade marks in respect of goods or services which are the subject of registration or of an application in a Member State for registration.

The following may not be registered, or if registered are liable to be declared invalid:

• signs which cannot constitute a trade mark;
• trade marks which are devoid of any distinctive character;
• trade marks which are liable to mislead or are contrary to public policy or accepted principles of morality;
• trade marks which are of such a nature as to deceive the public;
• a trade mark which is identical or similar to an earlier trade mark, where the goods or services which it represents are identical or similar to those represented by the earlier mark.

A registered trade mark confers on its proprietor exclusive rights therein. The proprietor is entitled to prevent all third parties not having his consent from using it in the course of trade.

Where the proprietor of an earlier trade mark has acquiesced, for a period of five successive years, in the use of a later registered trade mark, he is no longer entitled either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark 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.

Unless there are proper reasons for non-use, the proprietor of a trade mark may have his rights forfeited if:

• within a period of five years following the date of completion of the registration procedure, he has not put the trade mark to genuine use in the Member State concerned in connection with the goods or services in respect of which it is registered; or
• if, during an uninterrupted period of five years, the trade mark has not been put to genuine use.

The proprietor of a trade mark may also have his rights forfeited where, in consequence of his acts or inactivity, the mark has become the common name in the trade for a product or service in respect of which it is registered or where, in consequence of the use made of it by the proprietor or with his consent, the trade mark is liable to mislead the public.

Decision 92/10/EEC

This Decision postpones the date of entry into force of the national provisions implementing Directive 89/104/EEC to 31 December 1992.

RELATED ACTS

Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark [Official Journal L 11 of 14.01.1994]. This Regulation establishes a system allowing the Office for Harmonisation in the Internal Market (OHIM) to grant Community trade marks.

Last updated: 25.09.2005