Harmonisation of trade mark law in the European Union

This Directive aims at approximating EU countries' laws relating to trade marks, in order to foster the free movement of goods and services and free competition within the internal market. This approximation concerns the fundamental rules on trade marks acquired by registration. EU countries retain the right to organise the procedural aspect and the protection of trade marks acquired through use.

ACT

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 (Codified version) (Text with EEA relevance).

SUMMARY

This Directive lays down a framework governing trade marks in respect of goods or services which are:

• the subject of registration as individual trade marks, collective marks, guarantee or certification marks in an EU country, or in the Benelux Office for Intellectual Property;
• the subject of international registration having effect in an EU country.

Signs of which a trade mark may consist

A trade mark may consist of any signs capable of being represented graphically (particularly words, personal names, designs, letters, numerals, the shape of goods or of their packaging) provided that such signs are capable of distinguishing the goods or services of one undertaking from those of another.

Grounds for refusal of a trade mark

A trade mark is refused prior to registration, or may subsequently be declared invalid, for the following reasons:

• it is not distinctive;
• it is descriptive;
• it consists of signs which are customary in the current language of the trade in question;
• it is contrary to public policy or accepted principles of morality;
• it is of such a nature as to mislead the public;
• it is contrary to the provisions of Article 6 ter of the Paris Convention for the Protection of Industrial Property.

A trade mark is also refused, or may be declared invalid, if it is identical or similar to a trade mark that has been registered previously.

Furthermore, EU countries may provide that a trade mark be refused for registration or be declared invalid where and insofar as the use of the trade mark may be forbidden due to the existence of earlier rights such as:

• a right to a name;
• a right of personal portrayal;
• a copyright;
• an industrial property right.

If the proprietor of an earlier trade mark has, for 5 consecutive years, tolerated the use of a trade mark registered later, he may no longer request that it is declared invalid. Nor may he oppose the use of this later trade mark for goods or services for which it was registered, unless the registration of the trade mark was carried out in bad faith.

Rights conferred by a trade mark

The proprietor has an exclusive right to the trade mark that has been created. They may therefore prohibit anyone from using a sign which is identical or so similar as to lead to a risk of confusion in the consumer's mind. However, the proprietor may not limit use of the trade mark in the course of trade, where the following need to be indicated:

• a name or address;
• features of goods or services covered by the trade mark;
• the intended purpose of goods or services.

The trade mark may be the subject of a licence for goods and/or services or a part thereof.

Use of trade marks

The proprietor of a trade mark must make genuine use thereof within 5 years of its registration. Moreover, use may not be interrupted for more than 5 years. If this is not the case, the trade mark shall be subject to sanctions for non-use.

This Directive repeals Directive 89/104/EC.

RELATED DOCUMENTS

Proposal for a Directive of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks (Recast). (COM(2013)162 final of 27.03.2013).

The purpose of this proposal to recast the Trade Marks Directive (as well as of the associated proposal to amend the Community Trade Mark Regulation) is to make trade mark registration systems throughout the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security.

08.04.2014