Joint statements by the Council and the Commission of the European Communities entered in the minutes of the Council meeting, on the first Council Directive approximating the laws of the Member States on trade marks adopted on 21 December 1988 (OJ OHIM 1996, 607)

• Author: Office for Harmonization in the Internal Market
• Profession: European Commission
• Pages: 249-251

Page 249

Since the following statements by the Council and the Commission are not part of the legal text they are without prejudice to the interpretation of that text by the Court of Justice of the European Communities

Joint statements by the Council and the Commission of the European Communities entered in the minutes of the Council meeting, on the first Council Directive approximating the laws of the Member States on trade marks adopted on 21 December 1988

1. Re Article 1

   'The Council and the Commission consider that the Directive is to apply in each Member State to service marks, collective marks and guarantee or certification marks only insofar as marks of these types are the subject of laws in that State; the Directive does not oblige a Member State which does not have such types of marks to introduce them.'

2. Re Article 2

   (a) 'The Council and the Commission consider that Article 2 does not rule out the possibility:

   - of registering as a trade mark a combination of colours or a single colour;

   - of registering sounds as trade marks in the future, provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings.'

   (b) 'The Council and the Commission consider that the word "shape" is also intended to cover the three-dimensional form of goods.'

3. Re Article 3(1)(b)

   'The Council and the Commission consider that a trade mark is devoid of any distinctive character if it is not capable of distinguishing the goods or services of one undertaking from those of other undertakings.'

4. Re Article 3(1)(e)

   'The Council and the Commission consider that where goods are packaged, the expression "shape of goods" includes the shape of the packaging.'

5. Re Article 4(1)(b) and Article 5(1)(b)

   (a) 'The Council and the Commission consider that, for the purposes of this Directive, goods may be considered to be similar to services in appropriate circumstances.'

   (b) 'The Council and the Commission note that "likelihood of association" is a concept which in particular has been developed by Benelux case-law.'

6. Re Article 5(3)(d)

   'The Council and the Commission consider that the prohibition on using the sign in advertising does not affect the national provisions concerning the possibility of using or not using a trade mark in comparative advertising.' Page 250

7. Re Article 6(1)(a)

   'The Council and the Commission consider that the terms "his own name" in subparagraph (a) apply only in respect of natural persons.'

8. Re Article 9(1) and (2)

   'The Council and the Commission consider that the provisions of Article 9 (1) and (2), which establish that the entitlement to act against a later trade mark is lost after an acquiescence period of five successive years, do not prevent national authorities from deciding, in accordance with national law, whether such an entitlement has been lost owing to other circumstances, even though the acquiescence period has been less than five years.'

9. Re Article 10(1)

   'The Council and the Commission consider that the Member States may decide that the date of publication of the completion of the registration procedure marks the beginning of the five-year period.'

10. Re Article 16(2)

    'The Council and the Commission declare that the date of the entry into force of the national measures mandated by the Directive should be the same date as that from which it will be possible for Community trade mark applications to be filed. To this end, use will be made, if necessary, of the provisions of Article 16 (2).' Page 251