Harmonisation of trade mark law in the European Union
This Directive aims at approximating the laws of the Member States 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. Member States retain the right to organise the procedural aspect and the protection of trade marks acquired through use.
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).
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:
- which are the subject of registration or of an application for registration in a Member State, or in the Benelux Office for Intellectual Property;
- which are the subject of international registration having effect in a Member State.
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 shall be 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 shall also be refused, or may be declared invalid, if it is identical or similar to a trade mark that has been registered previously.
Furthermore, Member States 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 tolerated the use of a trade mark registered later for five consecutive years, they may no longer request a declaration of invalidity nor oppose the use of the later trade mark for goods or services for which the later trade mark was registered, unless the registration of that 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 five years of its registration. Moreover, use may not be interrupted for more than five 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.
|Act||Entry into force||Deadline for transposition in the Member States||Official Journal|
OJ L 299, 8.11.2008