amendments 41 - 106 to draft report

8/14/2019 AMENDMENTS 41 - 106 to Draft report

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EN United in diversity EN

EUROPEAN PARLIAMENT 2009 - 2014

Committee on Legal Affairs

2013/0089(COD)

30.10.2013

AMENDMENTS41 - 106

Draft reportCecilia Wikstrm(PE516.713v01-00)

on the proposal for a directive of the European Parliament and of the Councilto approximate the laws of the Member States relating to trade marks (recast)

(Recast Rule 87 of the Rules of Procedure)

Proposal for a directive(COM(2013)0162 C7-0088/2013 2013/0089(COD))


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AM_Com_LegReport


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Amendment 41

Sajjad Karim

Proposal for a directiveRecital 13

Text proposed by the Commission Amendment

(13) To this end, it is necessary to listexamples of signs which may constitute atrade mark, provided that such signs arecapable of distinguishing the goods orservices of one undertaking from those of

other undertakings. In order to fulfil theobjectives of the registration system fortrade marks, which are to ensure legalcertainty and sound administration, it isalso essential to require that the sign iscapable of being represented in a mannerwhich allows for a precise determinationof the subject of protection . A sign shouldtherefore be permitted to be represented inany appropriate form, and thus notnecessarily by graphic means, as long asthe representation offers satisfactory

guarantees to that effect.

(13) To this end, it is necessary to listexamples of signs which may constitute atrade mark, provided that such signs arecapable of distinguishing the goods orservices of one undertaking from those of

other undertakings. In order to fulfil theobjectives of the registration system fortrade marks, which are to ensure legalcertainty and sound administration, it isalso essential to require that the sign iscapable of being represented in a mannerwhich is clear, precise , self-contained,easily accessible, durable and objective . Asign should therefore be permitted to berepresented in any appropriate form, andthus not necessarily by graphic means, aslong as the representation offers

satisfactory guarantees to that effect.

Or. en

Justification

The intention of the change is to reflect the jurisprudence of the Court, following theSieckmann judgement.

Amendment 42Marielle Gallo



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(13) To this end, it is necessary to listexamples of signs which may constitute atrade mark, provided that such signs are

capable of distinguishing the goods orservices of one undertaking from those ofother undertakings. In order to fulfil theobjectives of the registration system fortrade marks, which are to ensure legalcertainty and sound administration, it isalso essential to require that the sign iscapable of being represented in a mannerwhich allows for a precise determination ofthe subject of protection. A sign shouldtherefore be permitted to be represented inany appropriate form, and thus not

necessarily by graphic means, as long asthe representation offers satisfactoryguarantees to that effect.

(13) To this end, it is necessary to listexamples of signs which may constitute atrade mark, provided that such signs are

capable of distinguishing the goods orservices of one undertaking from those ofother undertakings. In order to fulfil theobjectives of the registration system fortrade marks, which are to ensure legalcertainty and sound administration, it isalso essential to require that the sign iscapable of being represented in a mannerwhich allows for a precise determination ofthe subject of protection. A sign shouldtherefore be permitted to be represented inany appropriate form, and thus not

necessarily by graphic means, as long asthe representation uses freely availabletechnology and offers satisfactoryguarantees to that effect.

Or. en




(19) In order to ensure legal certainty andclarity, it is necessary to clarify that notonly in the case of similarity but also incase of an identical sign being used foridentical goods or services, protectionshould be granted to a trade mark only ifand to the extent that the main function ofthe trade mark, which is to guarantee thecommercial origin of the goods orservices, is adversely affected.

deleted

Or. en


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and to the extent that the main function ofthe trade mark , which is to guarantee thecommercial origin of the goods orservices, is adversely affected.

and to the extent that the main function ofthe trade mark is adversely affected.

Or. en

Amendment 46Pier Antonio Panzeri, Bernhard Rapkay

Proposal for a directiveRecital 19 a (new)


(19a) The main function of a trademark is

to guarantee the origin of the product tothe consumer or final user by enablinghim or her to distinguish without any

possibility of confusion between that product and products which have anotherorigin.

Or. en

Amendment 47Pier Antonio Panzeri

Proposal for a directiveRecital 19 b (new)


(19b) When determining whether themain function of a trade mark is adverselyaffected, it is necessary to interpret this

provision in the light of Article 11 of theCharter of Fundamental Rights of the

European Union and Article 10 of the European Convention on Human Rightsin order to guarantee the fundamentalright of freedom of expression.

Or. en


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Amendment 48Christian Engstrmon behalf of the Greens/EFA Group



(22) With the aim of strengthening trademark protection and combattingcounterfeiting more effectively, the

proprietor of a registered trade markshould be entitled to prevent third partiesfrom bringing goods into the customsterritory of the Member State without

being released for free circulation there,where such goods come from thirdcountries and bear without authorization atrade mark which is essentially identical tothe trade mark registered in respect of suchgoods.


proprietor of a registered European trademark shall also be entitled to prevent all third parties from bringing goods , in thecontext of commercial activity, into the

customs territory of the Union without being released for free circulation there,where such goods , including packaging, come from a third country and bearwithout authorization a trade mark which isessentially identical to the European trademark validly registered in respect of suchgoods and which cannot be distinguishedin its essential aspects from that trademark. In order not to hamper the

production, circulation and distribution oflegitimate goods, this rule should onlyapply if the proprietor of the trade mark isable to demonstrate clear and documentedevidence of a substantial risk of

fraudulent diversion of the allegedlycounterfeit goods into a Member State.The European Commission shall developand implement guidelines for nationalcustoms authorities with clear indicatorson how to establish such substantial riskof fraudulent diversion. The list of clearindicators shall reflect the importance ofunrestricted trade in, inter alia, genericmedicines, and shall be in line with

prevailing CJEU case law .

Or. en


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Amendment 49Bernhard Rapkay




proprietor of a registered trade mark should be entitled to prevent third parties from bringing goods into the customs territory ofthe Member State without being releasedfor free circulation there, where such goodscome from third countries and bear withoutauthorization a trade mark which is

essentially identical to the trade markregistered in respect of such goods.


proprietor of a registered trade mark should be entitled to prevent third parties from bringing goods into the customs territory ofthe Member State without being releasedfor free circulation there, where such goodscome from third countries and bear withoutauthorization a trade mark which is

essentially identical to the trade markregistered in respect of such goods. Thisshall be without prejudice to the Union'scompliance with WTO rules, notably withGATT Article V on freedom of transit.

Or. de




(22a) Recognising that the main publichealth concern lies with the quality of themedicines and not with trade mark orother intellectual property enforcementand should be addressed by othermeasures, including regulation aimed atimproving quality standards.

Or. en


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(23) In order to more effectively preventthe entry of infringing goods, particularlyin the context of sales over the Internet,the proprietor should be entitled to

prohibit the importing of such goods intothe Union where it is only the consignorof the goods who acts for commercial

purposes.

deleted

Or. en

Justification

Through clever wording and the doctrine of regional exhaustion, this text, together with itsarticle, tries to restrict parallel imports. It may make it impossible for private individuals tobuy completely legitimate goods, if they do this over the internet and from third countries.This affects not only counterfeits but completely legitimate originals as well: EU citizenswould be forbidden to buy certain things over the internet, simply because they do this from,

for example, a web shop in the US. Putting up such artificial barriers to trade through trademarks makes no economic sense.

Amendment 52Evelyn Regner



(23) In order to more effectively prevent

the entry of infringing goods, particularlyin the context of sales over the Internet,the proprietor should be entitled to

prohibit the importing of such goods intothe Union where it is only the consignorof the goods who acts for commercial

deleted


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purposes.

Or. de

Amendment 53Tadeusz Zwiefka



(24) In order to enable proprietors ofregistered trade marks to fightcounterfeiting more effectively, theyshould be entitled to prohibit the affixing

of an infringing trade mark to goods andcertain preparatory acts prior to theaffixing.

(24) In order to enable proprietors ofregistered trade marks to fightcounterfeiting more effectively, theyshould be entitled to prohibit the affixing

of an infringing trade mark to goods and preparatory acts prior to the affixing.

Or. en

Amendment 54Antonio Masip Hidalgo



(24) In order to enable proprietors ofregistered trade marks to fightcounterfeiting more effectively, theyshould be entitled to prohibit the affixingof an infringing trade mark to goods andcertain preparatory acts prior to theaffixing.

(24) In order to enable proprietors ofregistered trade marks to fightcounterfeiting more effectively, theyshould be entitled to prohibit the affixingof an infringing trade mark to goods andall preparatory acts prior to the affixing.

Or. fr

Justification

To make it possible for proprietors of trade marks to prohibit the affixing of an infringing


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trade mark both to products and to all preparatory acts, in order to provide greater legalcertainty.

Amendment 55

Pier Antonio Panzeri, Bernhard Rapkay



(25a) The exclusive rights conferred by atrade mark should not entitle the

proprietor to prohibit the use of signs orindications which are used for a duecause in order to allow consumers to

make comparisons, to express opinions orwhere there is no commercial use of themark.

Or. en


Proposal for a directive

Recital 29


(29) Trade marks fulfil their purpose ofdistinguishing goods or services andallowing consumers to make informedchoices only when they are actually usedon the market. A requirement of use is alsonecessary in order to reduce the totalnumber of trade marks registered and

protected in the Union and, consequently,the number of conflicts which arise

between them. It is therefore essential torequire that registered trade marks mustactually be used in connection with thegoods or services for which they areregistered, or, if not used, must be liable to

(29) Trade marks fulfil their purpose ofdistinguishing goods or services andallowing consumers to make informedchoices only when they are actually usedon the market. A requirement of use is alsonecessary in order to reduce the totalnumber of trade marks registered and


between them. It is therefore essential torequire that registered trade marks mustactually be used in connection with thegoods or services for which they areregistered, or, if not used within five years


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be revoked. of approval , must be liable to be revoked.

Or. de




(29) Trade marks fulfil their purpose ofdistinguishing goods or services andallowing consumers to make informedchoices only when they are actually used

on the market. A requirement of use is alsonecessary in order to reduce the totalnumber of trade marks registered and


between them. It is therefore essential torequire that registered trade marks mustactually be used in connection with thegoods or services for which they areregistered, or, if not used, must be liable to

be revoked.

(29) Trade marks fulfil their purpose ofdistinguishing goods or services andallowing consumers to make informedchoices only when they are actually used

on the market. A requirement of use is alsonecessary in order to reduce the totalnumber of trade marks registered and


between them. It is therefore essential torequire that registered trade marks mustactually be used in connection with thegoods or services for which they areregistered, or, if not used within five yearsof the date of registration , must be liableto be revoked.

Or. fr

Justification

To bring the recital into line with Article 16(1) of the Directive. This amendment is also inkeeping with EU efforts to support creative endeavour in SMEs, in that it gives them time todevelop and protect their trade marks.




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(36a) Notice of opposition to registrationof the trade mark may also be given byany natural or legal person and any group

or body representing manufacturers, producers, suppliers of services, traders orconsumers furnishing proof that a trademark is of such a nature as to deceive the

public, for instance as to the nature,quality or geographical origin of the

goods or service.

Or. en

Amendment 59Cecilia Wikstrm



(41a) In accordance with the Joint Political Declaration of Member Statesand the Commission on explanatorydocuments of 28 September 2011,

Member States have undertaken toaccompany, in justified cases, thenotification of their transpositionmeasures with one or more documentsexplaining the relationship between thecomponents of a directive and thecorresponding parts of nationaltransposition instruments. With regard tothis Directive, the legislator considers thetransmission of such documents to be

justified.

Or. en



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Proposal for a directiveArticle 2 paragraph 1 point b


(b) Agency means the European UnionTrade Marks and Designs Agencyestablished in accordance with Article 2 ofRegulation (EC) No 207/2009;

(b) Agency means the European Union Intellectual Property Agency establishedin accordance with Article 2 of Regulation(EC) No 207/2009;

(This amendment applies throughout thetext. Adopting it will necessitatecorresponding changes throughout.)

Or. en


Proposal for a directiveArticle 3 paragraph 1 introductory part


A trade mark may consist of any signs , in particular words, including personalnames, designs, letters, numerals, colours

as such, the shape of goods or of their packaging, or sounds, provided that suchsigns are capable of:

A trade mark may consist of any signs, in particular words, including personalnames, designs, letters, patterns, logos,

numerals, colours as such, the shape ofgoods or of their packaging, or sounds, provided that such signs are capable of:

Or. de



Article 3 paragraph 1 introductory partDirective 2008/95/ECArticle 2


A trade mark may consist of any signs, in A trade mark may consist of any signs, in


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particular words, including personalnames, designs, letters, numerals, coloursas such, the shape of goods or of their

packaging, or sounds, provided that suchsigns are capable of:

particular words, including personalnames, designs, models, motifs, devicesand logos, letters, numerals, colours assuch, the shape of goods or of their


Or. fr

Justification

Models, motifs, devices and logos are common components of signs used as trade marks.




A trade mark may consist of any signs , in particular words, including personalnames, designs, letters, numerals, coloursas such, the shape of goods or of their


A trade mark may consist of any signs, in particular words, including personalnames, designs, letters, numerals, coloursas such, the shape of goods or of their

packaging, or sounds, provided that generally available technology is used and

such signs are capable of:

Or. de

Amendment 64Giuseppe Gargani, Raffaele Baldassarre



A trade mark may consist of any signs, in particular words, including personalnames, designs, letters, numerals, coloursas such, the shape of goods or of their

A trade mark may consist of any signs, in particular words, including personalnames, designs, models, motifs, devices,logos, letters, numerals, colours as such,


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the shape of goods or of their packaging, orsounds, provided that such signs arecapable of:

Or. it

Amendment 65Antonio Lpez-Istriz White



b) being represented in a manner whichenables the competent authorities and the

public to determine the precise subject of

the protection afforded to its proprietor.

b) being represented in both their publication and their entry in the register in a manner which enables the competent

authorities and the public to determine the precise subject of the protection afforded toits proprietor.

Or. es

Justification

There should be a reference to the mandatory publication of all trade marks as a guarantee for third parties.


Proposal for a directiveArticle 4 paragraph 1 point j


(j) trade marks which are excluded fromregistration pursuant to Union legislation

or international agreements to which theUnion is party, providing for protection oftraditional terms for wine and traditionalspecialities guaranteed.

(j) trade marks which are excluded fromregistration pursuant to Union legislation

or international agreements to which theUnion is party, providing for protection ofspirit drinks, traditional terms for wine andtraditional specialities guaranteed.

Or. en


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Justification

Undoubtedly, the provision is beneficial for the owners of GIs. However, the reason toidentify spirit drinks in this provision results from the GIs covered by Regulation (EC) No110/2008 of the European Parliament and of the Council of 15 January 2008. It is necessaryto distinguish them from other geographical indications and designations of origin for

agricultural products and foodstuffs included in Council Regulation (EC) No 510/2006 or No509/2006 of 20 March 2006.


Proposal for a directiveArticle 4 paragraph 5


5. A trade mark shall not be refusedregistration or be declared invalid inaccordance with paragraph 1(b), (c) or (d)if, before the date of application forregistration or after the date ofregistration , and following the use whichhas been made of it, it has acquired adistinctive character.

5. A trade mark shall not be refusedregistration in accordance with paragraph1(b), (c) or (d) if, before the date ofapplication for registration following usewhich has been made of it, it has acquireda distinctive character. A trade mark shallnot be declared invalid for the samereasons if, before the date of application

for invalidity , following use which has been made of it, it has acquired adistinctive character.

Or. en




6. Any Member State may providethat paragraph 5 shall also apply where thedistinctive character was acquired after thedate of application for registration and

before the date of registration.

6. Paragraph 5 shall also apply where thedistinctive character was acquired after thedate of application for registration and

before the date of registration.


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Or. fr

Justification

With a view to ensuring legal certainty and in order to acknowledge and protect investmentsmade by businesses, in particular SMEs, this provision should apply across the board, ratherthan being left to the discretion of individual Member States.


Proposal for a directiveArticle 5 paragraph 1 point a


(a) if it is identical with an earlier trademark , and the goods or services for whichthe trade mark is applied for or is registered are identical with the goods orservices for which the earlier trade mark is

protected ;

(a) if it is identical with , or similar to, anearlier trade mark irrespective of whether the goods or services for which it is appliedor registered are identical with , similar toor not similar to those for which the earliertrade mark is registered, where the earliertrade mark has a reputation in the

Member State of registration or, in thecase of a European Union trade mark,has a reputation in the Union and the useof the later trade mark without due cause

would take unfair advantage of, or bedetrimental to, the distinctive character orthe repute of the earlier trade mark ;

Or. en



Article 5 paragraph 3 point a


(a) if it is identical with, or similar to, anearlier trade mark irrespective of whetherthe goods or services for which it is applied

(a) if it is identical with, or similar to, anearlier trade mark irrespective of whetherthe goods or services for which it is applied


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or registered are identical with, similar toor not similar to those for which the earliertrade mark is registered, where the earliertrade mark has a reputation in a MemberState or, in case of a European trade mark,has a reputation in the Union and the use of

the later trade mark without due causewould take unfair advantage of, or bedetrimental to, the distinctive character orthe repute of the earlier trade mark;

or registered are identical with, similar toor not similar to those for which the earliertrade mark is registered, where the earliertrade mark has a reputation in a substantial

part of the territory of the Union, whichmay lie within a single Member State or,

in case of a European trade mark, has areputation in the Union and the use of thelater trade mark without due cause wouldtake unfair advantage of, or be detrimentalto, the distinctive character or the repute ofthe earlier trade mark;

Or. fr

Justification

It needs to be made clear that a reputation in the Union does not mean a reputation in eachof the Member States.


Proposal for a directiveArticle 5 paragraph 3 point d


(d) if it is excluded from registration andshall not continue to be used pursuant toUnion legislation providing for protectionof designations of origin and

geographical indications.

deleted

Or. en

Justification

Related to amendment to article 45 paragraph 2, it is proposed to delete Article 5 Paragraph

3 (d) since this ground of refusal is already established in article 4 paragraph 1 (i) and rightowners of designations of origin and geographical indications are entitled to file anopposition. Technically, this is a more correct solution that reaches the same objectivewithout having to make any amendments to article 9 Paragraph 1 when dealing withinvalidity in consequence of acquiescence.


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1. The registration of a trade mark shallconfer on the proprietor exclusive rights .

1. The registration of a trade mark shallconfer on the proprietor exclusive rights in

particular, the positive right to use it andto prevent any third party not having hisconsent from using it .

Or. en




(a) the sign is identical with the trade markand is used in relation to goods or serviceswhich are identical with those for whichthe trade mark is registered and wheresuch use affects or is liable to affect the

function of the trade mark to guarantee toconsumers the origin of the goods orservices ;

(a) the sign is identical with the trade markand is used in relation to goods or serviceswhich are identical with those for whichthe trade mark is registered ;

Or. en




(a) the sign is identical with the trade mark (a) the sign is identical with the trade mark


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and is used in relation to goods or serviceswhich are identical with those for whichthe trade mark is registered and where suchuse affects or is liable to affect the functionof the trade mark to guarantee toconsumers the origin of the goods or

services ;

and is used in relation to goods or serviceswhich are identical with those for whichthe trade mark is registered and where suchuse affects or is liable to affect the functionof the trade mark to guarantee toconsumers the origin of the goods or

services by enabling him or her todistinguish without any possibility ofconfusion between that product and

products which have another origin ;

Or. en




(b) the sign is identical , or similar to, thetrade mark and is used for goods orservices which are identical with or similarto the goods or services for which the trademark is registered , if there exists alikelihood of confusion on the part of the

public; the likelihood of confusion includesthe likelihood of association between thesign and the trade mark;

(b) without prejudice to point a, the sign isidentical , or similar to, the trade mark andis used for goods or services which areidentical with or similar to the goods orservices for which the trade mark isregistered , if there exists a likelihood ofconfusion on the part of the public; thelikelihood of confusion includes thelikelihood of association between the signand the trade mark;

Or. en


Proposal for a directiveArticle 10 paragraph 3 point c


(c) importing or exporting the goods underthe sign;

(c) manufacturing or placing under asuspensive procedure, importing,


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4. The proprietor of a registered trademark shall also be entitled to prevent theimporting of goods pursuant to paragraph

3(c) where only the consignor of the goods acts for commercial purposes.

deleted

Or. de




4. The proprietor of a registered trade markshall also be entitled to prevent theimporting of goods pursuant to paragraph3(c) where only the consignor of the goodsacts for commercial purposes .

4. The proprietor of a registered trade markshall also be entitled to prevent theimporting of goods pursuant to paragraph3(c) where only the consignor of the goodsacts in the context of a commercialactivity .

Or. en




5. The proprietor of a registered trade markshall also be entitled to prevent all third

parties from bringing goods, in the contextof commercial activity, into the customsterritory of the Member State where thetrade mark is registered without beingreleased for free circulation there, wheresuch goods, including packaging, come

5. The proprietor of a registered European trade mark shall also be entitled to preventall third parties from bringing goods, in thecontext of commercial activity, into thecustoms territory of the Union without

being released for free circulation there,where such goods, including packaging,come from a third country and bear


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from third countries and bear withoutauthorization a trade mark which isidentical to the trade mark registered inrespect of such goods , or which cannot bedistinguished in its essential aspects fromthat trade mark.

without authorization a trade mark which isessentially identical to the European trademark validly registered in respect of suchgoods and which cannot be distinguishedin its essential aspects from that trademark.

In order not to hamper the production,circulation and distribution of legitimate

goods, this rule should only apply if the proprietor of the trade mark is able todemonstrate clear and documentedevidence of a substantial risk of

fraudulent diversion of the allegedlycounterfeit goods into a Member State.

The European Commission shall developand implement guidelines for nationalcustoms authorities with clear indicators

on how to establish such substantial riskof fraudulent diversion. The list of clearindicators shall reflect the importance ofunrestricted trade in, inter alia, genericmedicines, and shall be in line with

prevailing CJEU case law.

Or. en

Amendment 82Marielle Gallo, Tadeusz Zwiefka




parties from bringing goods, in the contextof commercial activity, into the customsterritory of the Member State where thetrade mark is registered without beingreleased for free circulation there, wheresuch goods, including packaging, comefrom third countries and bear withoutauthorization a trade mark which isidentical to the trade mark registered in


parties from bringing goods, in the contextof commercial activity, into the customsterritory of the Member State where thetrade mark is registered without beingreleased for free circulation there, wheresuch goods, including packaging, comefrom third countries and bear withoutauthorization a trade mark which isidentical to the trade mark registered in


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respect of such goods, or which cannot bedistinguished in its essential aspects fromthat trade mark.

respect of such goods, or which cannot bedistinguished in its essential aspects fromthat trade mark.

Customs authorities shall also carry outthe relevant controls according to therules laid down in Regulation (EC)608/2013 at the request of rightholdersand based on risk analysis criteria, on

goods, including packaging, suspected ofinfringing a trade mark that are crossingthe territory of the European Union undera suspensive procedure and are destinedand released to the market of a thirdcountry.

Or. en





parties from bringing goods, in the contextof commercial activity, into the customsterritory of the Member State where thetrade mark is registered without beingreleased for free circulation there, wheresuch goods, including packaging, comefrom third countries and bear withoutauthorization a trade mark which isidentical to the trade mark registered inrespect of such goods, or which cannot bedistinguished in its essential aspects fromthat trade mark.


parties from bringing goods, in the contextof commercial activity, into the customsterritory of the Member State where thetrade mark is registered without beingreleased for free circulation there, wheresuch goods, including packaging, comefrom third countries and bear withoutauthorization a trade mark which isidentical to the trade mark registered inrespect of such goods, or which cannot bedistinguished in its essential aspects fromthat trade mark. This shall be without

prejudice to the Union's compliance withWTO rules, notably with GATT Article Von freedom of transit.

Or. en


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Amendment 84Cecilia Wikstrm, Rebecca Taylor


Article 10 paragraph 5 subparagraph 1a (new)


Member States shall take appropriatemeasures with regards to ensuring thesmooth transit of generic medicines.Therefore a proprietor of a trade markshall not have the right to prevent anythird parties from bringing goods, in thecontext of commercial activity, into thecustoms territory of the Member State

based upon similarities, perceived oractual, between the international non-

proprietary name (INN) for the activeingredient in the medicines and aregistered trademark.

Or. en

Justification

There have been cases where International non-proprietary names (INN) printed on the

packaging of generic medicines have created a confusion on whether this could constitute arisk for confusion with trademarks similar to the INN. One such case being a genericmedicine containing Amoxicillin and the trademark Axmoxil. INNs by law have to be presenton the packaging of pharmaceutical products to provide health professionals with a uniqueand universally available designated name to identify each pharmaceutical substance. It

should thus be clarified that these generic names are not grounds for trademarkinfringements and thus should also not be grounds to intervene against generic medicines intransit.

Amendment 85

Marielle Gallo

Proposal for a directiveArticle 14 paragraph 1 subparagraph 2


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The first subparagraph shall only applywhere the use made by the third party is inaccordance with honest practices in

industrial or commercial matters.

This paragraph shall only apply where theuse made by the third party is inaccordance with honest practices in

industrial or commercial matters.

Or. en

Amendment 86Sajjad Karim



2. The use by the third party shall beconsidered not to be in accordance withhonest practices, in particular in the

following cases:

deleted

(a) it gives the impression that there is acommercial connection between the third

party and the proprietor of the trademark;

(b) it takes unfair advantage of or is

detrimental to, the distinctive character orthe repute of the trade mark without duecause.

Or. en


Proposal for a directiveArticle 14 paragraph 3 a (new)


3a. The trade mark shall not entitle the proprietor to prohibit a third party from


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using the trade mark for a due cause inconnection with:

(a) advertising or promotion that permitsconsumers to compare goods or services;or

(b) identifying and parodying, criticizing,or commenting upon the trade mark proprietor or the goods or services of thetrade mark owner proprietor; or

(c) any non-commercial use of a mark.

Or. en


Proposal for a directiveArticle 14 a (new)


Article 14 a

Limitation of the rights conferred by atrade mark

Nothing in this directive shall limit theright of all persons, including legal

persons, to publicly express themselves,through any means or media they choose,

provided that they do not violate the rightsafforded by Article 10.

This includes, but is not limited to,expressions for the purposes of politicalor social commentary, teaching, scientificresearch, journalism, artistic expression,

personal communication, criticism orreview, comparisons of products orservices, caricature, parody or pastiche.

Or. en


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Amendment 89Cecilia Wikstrm



1. The trade mark shall not entitle the proprietor to prohibit its use in relation togoods which have been put on the marketin the Union under that trade mark by the

proprietor or with his consent.

1. The trade mark shall not entitle the proprietor to prohibit its use in relation togoods which have been put on the marketin the Union under that trade mark by the

proprietor or with his consent , or that havebeen sold to individual consumers inaccordance with article 10(4) .

Or. en


Proposal for a directiveArticle 17


Article 17 deleted

Non-use as defence in infringement proceedings

The proprietor of a trade mark shall beentitled to prohibit the use of a sign onlyto the extent that his rights are not liableto be revoked pursuant to Article 19 at thetime the infringement action is brought.

Or. en

Justification

The provision will shift the obligation to decide upon non-use of trade marks on courts whichin fact will extend the proceeding and put additional burden of proof on the plaintiff.Currently, proceedings for invalidity of a registered trade mark often take place within thecompetences of the national patent offices, while shifting that responsibility to courts willcreate two different practices and double competences. The abovementioned situation may


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lead to some discrepancies between judgments of the Patent Office and decisions held bycourts in terms of grounds for trade mark invalidation due to non-use.

Amendment 91

Christian Engstrmon behalf of the Greens/EFA Group

Proposal for a directiveArticle 18 a (new)


Article 18 a

Indemnification of the Importer and theOwner of the Goods

Appropriate agencies shall have theauthority to order a proprietor of a trademark to pay the importer, the consigneeand owner of the goods appropriatecompensation for any injury caused tothem through a wrongful detention of

goods due to import restriction rights granted in Article 10.

Or. en

Justification

In accordance with TRIPS Article 56, the relevant agency shall have the authority to order anapplicant, in this case a trade mark proprietor, to appropriately compensate importers orowners for wrongful detentions. Wrongful detentions are a major and escalating problem.

According to the Commission annual report "EU Customs Enforcement of Intellectual Property Rights: Results at the Border", in 2011, goods were detained by mistake in morethan 2 700 cases, an increase of 46 % over two years before.

Amendment 92

Tadeusz Zwiefka



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1. An application for registration of a trademark shall contain:

1. An application for registration of a trademark shall contain at least :

Or. en




The offices shall limit their examinationex officio of whether a trade markapplication is eligible for registration to theabsence of the absolute grounds for refusal

provided for in Article 4.

The offices shall undertake examination exofficio of whether a trade mark applicationis eligible for registration considering theabsolute grounds for refusal provided for inArticle 4.

Or. en

Justification

Currently, the full examination system examining for both absolute and relative grounds for

refusal is used by 11 Member States i.e. Poland, Cyprus, Czech Republic, Estonia, Finland,Greece, Ireland, Malta, Portugal, Slovakia and Sweden. The report of the Max Planckinstitute in 2011 confirms the strong support by 48 per cent of the proprietors for introducingan ex-officio examination of relative grounds for refusal.




1. Prior to registration of a trade mark, anynatural or legal person and any group or

body representing manufacturers, producers, suppliers of services, traders or

1. Prior to registration of a trade mark, anynatural or legal person and any group or

body representing manufacturers, producers, suppliers of services, traders or


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consumers may submit to the office writtenobservations, explaining on which of thegrounds listed in Article 4 the trade markshall not be registered ex officio. Theyshall not be parties to the proceedingsbefore the office.

consumers may submit to the office writtenobservations, explaining on which of thegrounds listed in Article 4 the trade markshall not be registered ex officio.

Or. en




2a. Member States establishing opposition procedures based on absolute groundscovered by Article 4 shall not be requiredto implement this provision.

Or. en

Justification

It is redundant to impose an inefficient procedure of observations by third parties to those Member States who already have an opposition procedure based on those very same absolute grounds. This duplicity makes no sense. Therefore, it is proposed that this provision would beoptional for these Member States.




1. Member States shall provide for anefficient and expeditious administrative

procedure before their offices for opposingthe registration of a trade mark application

1. Member States shall provide for anefficient and expeditious administrative

procedure before their offices for opposingthe registration of a trade mark application.


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on the grounds provided for in Article 5 .

Or. en

Justification

Reference to Article 5 is deleted. It is intended to allow Member States to freely determine the grounds of opposition including, if desired, absolute grounds of refusal.




2. The administrative procedure referred toin paragraph 1 shall provide that at leastthe proprietor of an earlier right referred toin Article 5(2) and (3) shall be able to file anotice of opposition.

2. The administrative procedure referred toin paragraph 1 shall provide that at leastthe proprietor of an earlier right referred to in Article 4(1)(i), Article 5(2) and (3) shall

be able to file a notice of opposition.

Or. en

Justification

A reference to Article 4, paragraph 1(i) is included and as a consequence, not only theowners of prior rights according to article 5 but also right owners of designations of originand geographical indications may file an opposition.




3. The parties shall be granted a period oftime of at least two months before theopposition proceedings commence in orderto negotiate the possibility of an amicable

3. The parties shall be granted , at their joint request, a minimum of two monthsin the opposition proceeding in order tonegotiate the possibility of an amicable


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settlement between the opposing party andthe applicant.

settlement between the opposing party andthe applicant.

Or. en

Justification

The automatic grant of a cooling off period is deleted since it is inefficient, but a cooling off period for a minimum of two months is proposed if the parties jointly request it.




3a. Notice of opposition to registration ofthe trade mark may also be given by anynatural or legal person and any group orbody representing manufacturers,

producers, suppliers of services, traders orconsumers.

Or. en




1. In administrative opposition proceedings, where at the filing date or

date of priority of the later trade mark, the period of five years within which theearlier trade mark must have been put togenuine use as provided for in Article 16had expired, upon request of the applicantthe proprietor of the earlier trade mark who

1. In opposition proceedings, where at thefiling date or date of priority of the later

trade mark, the period of five years withinwhich the earlier trade mark must have

been put to genuine use as provided for inArticle 16 had expired, upon request of theapplicant the proprietor of the earlier trademark who has given notice of opposition


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has given notice of opposition shall furnish proof that the earlier trade mark has been put to genuine use as provided for inArticle 16 during the period of five years

preceding the filing date or date of priorityof the later trade mark, or that proper

reasons for non-use existed. In the absenceof proof to this effect the opposition shall

be rejected.

shall furnish proof that the earlier trademark has been put to genuine use as

provided for in Article 16 during the periodof five years preceding the filing date ordate of priority of the later trade mark, orthat proper reasons for non-use existed. In

the absence of proof to this effect theopposition shall be rejected.

Or. en




1. In administrative opposition proceedings, where at the filing date ordate of priority of the later trade mark, the

period of five years within which theearlier trade mark must have been put togenuine use as provided for in Article 16had expired, upon request of the applicantthe proprietor of the earlier trade mark whohas given notice of opposition shall furnish

proof that the earlier trade mark has been put to genuine use as provided for inArticle 16 during the period of five years

preceding the filing date or date of priorityof the later trade mark, or that properreasons for non-use existed. In the absenceof proof to this effect the opposition shall

be rejected.

1. In administrative opposition proceedings, Member States may providethat, where at the filing date or date of

priority of the later trade mark, the periodof five years within which the earlier trademark must have been put to genuine use as

provided for in Article 16 had expired,upon request of the applicant the proprietorof the earlier trade mark who has givennotice of opposition must furnish proofthat the earlier trade mark has been put togenuine use as provided for in Article 16during the period of five years precedingthe filing date or date of priority of the latertrade mark, or that proper reasons for non-use existed. In the absence of proof to thiseffect the opposition shall be rejected.

Or. es

Justification

While it is acceptable to require proof of use in opposition proceedings, this should not beimposed as a mandatory requirement. The proposed option causes problems, since if use isnot proven in relation to certain products the later trade mark is entered but the previous


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trade mark does not lapse, and trade marks on products that were not used at the time couldin fact be used at a later date, meaning that the two opposing trade marks would coexist, tothe detriment of consumers.

Amendment 102

Antonio Lpez-Istriz White



1. Member States shall provide for anadministrative procedure before theiroffices for revocation or declaration ofinvalidity of a trade mark.

1. Member States may provide for anadministrative procedure before theiroffices for revocation or declaration ofinvalidity of a trade mark.

Or. es

Justification

Imposing administrative procedures for revocation or declaration of invalidity may pose jurisdictional problems for some countries, since such matters fall within the exclusivecompetence of the courts (Article 22(1) LOPJ). In the end such problems could well end up inthe courts in any case, since it will be possible to appeal against decisions taken by the

National Offices, which will prolong the period required for reaching a final settlement.




1. In administrative proceedings for adeclaration of invalidity based on aregistered trade mark with an earlier filingdate or priority date, if the proprietor of the

later trade mark so requests, the proprietorof the earlier trade mark shall furnish proofthat, during the period of five years

preceding the date of the application for adeclaration of invalidity, the earlier trademark has been put to genuine use as

provided for in Article 16 in connection

1. In proceedings for a declaration ofinvalidity based on a registered trade markwith an earlier filing date or priority date, ifthe proprietor of the later trade mark so

requests, the proprietor of the earlier trademark shall furnish proof that, during the period of five years preceding the date ofthe application for a declaration ofinvalidity, the earlier trade mark has been

put to genuine use as provided for inArticle 16 in connection with the goods or


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with the goods or services in respect ofwhich it is registered and which he cites as

justification for his application, or thatthere are proper reasons for non-use,

provided that the period of five yearswithin which the earlier trade mark must

have been put to genuine use has expired atthe date of the application for a declarationof invalidity.

services in respect of which it is registeredand which he cites as justification for hisapplication, or that there are proper reasonsfor non-use, provided that the period offive years within which the earlier trademark must have been put to genuine use

has expired at the date of the applicationfor a declaration of invalidity.

Or. en




Member States shall ensure that the officescooperate with each other and with theAgency in order to promote convergenceof practices and tools and achieve coherentresults in the examination and registrationof trade marks.

Member States shall ensure that the officesmay effectively cooperate with each otherand with the Agency in order to promoteconvergence of practices and tools andachieve coherent results in the examinationand registration of trade marks.

Or. en

Amendment 105Sajjad Karim



Member States shall ensure that the officescooperate with each other and with theAgency in order to promote convergenceof practices and tools and achievecoherent results in the examination andregistration of trade marks .

Member States shall ensure that the officescooperate with each other and with theAgency in order to promote convergenceof practices and tools.


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Or. en




Member States shall ensure that the officescooperate with the Agency in all areas oftheir activities other than those referred toin Article 52 which are of relevance for the

protection of trade marks in the Union.

Member States shall ensure that the officesmay effectively cooperate with the Agencyin all areas of their activities other thanthose referred to in Article 52 which are ofrelevance for the protection of trade marksin the Union.

Or. en

amendments 41 - 106 to draft report

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