EU trade mark law (national registrations)
Directive (EU) 2015/2436 to broadly align EU countries’ laws relating to trade marks
WHAT DOES THIS DIRECTIVE DO?
It aims to align EU national laws and procedural rules for the registration of trademarks.
It forms part of a reform package along with the revision of Regulation (EC) No 207/2009 on the Community (EU) trade mark. The package is designed to make trade mark registration systems all over the EU more accessible and efficient for businesses.
This directive sets out the basis for the adoption of national laws for 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.
A trade mark can be any sign capable of being represented graphically (particularly words, including personal names, or designs, letters, numerals, the shape of goods or of their packaging). The sign must be capable of distinguishing the goods or services of one person or company from those of another.
Grounds for refusal
A trade mark can be refused prior to registration, or may subsequently be declared invalid, for a number of reasons including that:
it is not distinctive;
it is merely descriptive;
it consists of signs which are customary in the current language of the trade in question;
it is contrary to the principles that underpin constitutional laws and regulations or accepted principles of morality;
it is of such a nature as to mislead the public, for instance, as to the nature, quality or geographical origins of the product or service.
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.
The owner has an exclusive right to the trade mark that has been created.
They may 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.
The owner may not prohibit use of the trade mark by those acting in the course of their business, where the following need to be indicated:
a name or address of a third party, when the latter is a natural person;
features of goods or services covered by the trade mark;
the intended purpose of goods or services.
The proprietor of a trade mark must make genuine use of the trade mark within 5 years of its registration.
Use interrupted during a continuous 5 year period shall subject the trade mark to sanctions for non-use.
Applications must contain:
a request for registration;
information identifying the applicant;
a list of the goods and services for which registration is requested;
a representation of the trademark which allows both the authorities and the public to ascertain what is being protected.
The application is subject to the payment of a fee to be determined by the EU country concerned.
Duration and renewal
Trade marks are registered for a period of 10 years from the date of filing.
They can be renewed for a further 10 years at the request of the owner on the payment of a renewal fee. The owner will be informed by the national trade mark office of the expiry of their trade mark 6 months in advance of that expiry date.
This directive repeals and replaces Directive 2008/95/EC as of 14 January 2019.
FROM WHEN DOES THE DIRECTIVE APPLY?
It applies from 12 January 2016. EU countries have to incorporate it into national law by 14 January 2019.
For more information, see ‘Trade mark protection in the EU’ on the European Commission’s website.
* Collective marks: When an application for registration is filed, it is possible to designate a trade mark as being collective. Associations such as manufacturers, producers or suppliers of services may apply for such a mark.
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 (OJ L 336, 23.12.2015, pp. 1-26)
Successive amendments to Directive (EU) 2015/2436 have been incorporated into the original document. This consolidated version is of documentary value only.
last update 16.06.2016