Trade Marks Directive and Regulation

Council Directive No. 89/104/EEC (Trade Marks Directive)

Consolidated version: Directive No. 2008/95/EC of the European Parliament and of the Council

The Trade Marks Directive has been the first attempt of approximation of national laws relating to trade marks in respect of good and services. Its aim was to set out the fundamental principles of the Community trade marks in terms of regulation and enforcement, without imposing the harmonisation of the national systems.

About the contents of the Trade Marks Directive, art. 2 gives a definition of trademark: “A trade mark may consist of any sign capable of being represented graphically, particularly words, including 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 other undertakings”.

Then, the Directive establishes grounds for refusing registration, licensing, revoking or declaring invalid trade marks for two main reasons: the protection of trade mark proprietors' rights and the circumscription of trademark usage. It is possible to give an example of these two opposite tendencies of the Directive: “a trade mark shall not be registered or, if registered, shall be liable to be declared invalid if 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” (art. 4.1). At the same time, the refusal (or the invalidity) shall apply in case of “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” (art. 3.1). The Directive, therefore, protects trade marks but they cannot be considered as an absolute right but rather as instruments for the better functioning of the internal market.

In conclusion, the balance of these different aims marks the spirit of the Directive that, however, leaves great discretionarity to national bodies on how to deal practically with the registration of trade marks.

Council Regulation No. 40/94/EC (Community Trade Mark Regulation)

Consolidated version: Council Regulation No. 207/2009/EC

In order to offer an uniform protection of trade marks within the European Union, Council Regulation No. 40/94/EC created a Community trade mark allowing an unitary identification of products and services by enterprises. As a matter of fact, the registration for a Community Trade Mark can be obtained throughout a single application to the Office of Harmonisation in the Internal Market (OHIM) and it produces the same effects in all Member States. Once received an application for registration, the OHIM (and, in some cases, national industrial property offices) actives a searching procedure in order to check the possible existence of a conflict with earlier rights relating to a Community or national trade mark. This single procedure has the advantage of reducing costs for registration, because the applicant avoids to fill applications in every country all over the the Europe. However, if the OHIM refuses the registration, the applicant cannot recover the costs of filling the Community trade mark application and he will bear the costs of national applications in order to obtain single national registrations.

The Community trade mark lasts for ten years from the date of filling the application and can be renewed for further periods of ten years. It gives exclusive rights to the proprietor who can prohibit any third party to use identical or similar signs to the Community trade mark registered. National courts have exclusive competence about deciding on infringements and validity of Community trade marks.

The Council Regulation sets out also the conditions for the refusal of registration, surrender, revocation and invalidity of a Community trade mark that are in the competence of OHIM. Its decision are open to appeal before the Court of Appeal and, in certain cases, the ECJ.

Despite the fact that the Community trade mark system has seemed to work well over the years, some argue that the coexistence of Community and national trade marks has created confusion in trade mark registration system.