Article 8
Relative grounds for refusal
- Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall
not be registered:
- (a) if it is identical with the earlier trade mark and the goods or services for which
registration is applied for are identical with the goods or services for which the
earlier trade mark is protected;
- (b) if, because of its identity with, or similarity to, the earlier trade mark and the identity
or similarity of the goods or services covered by the trade marks there exists a
likelihood of confusion on the part of the public in the territory in which the earlier
trade mark is protected; the likelihood of confusion includes the likelihood of
association with the earlier trade mark.
- For the purposes of paragraph 1, 'earlier trade mark' means:
- (a) trade marks of the following kinds with a date of application for registration which is
earlier than the date of application for registration of the EU trade mark, taking
account, where appropriate, of the priorities claimed in respect of those trade marks:
(i) EU trade marks;
(ii) trade marks registered in a Member State, or, in the case of Belgium, the
Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;
(iii) trade marks registered under international arrangements which have effect in a
Member State;
(iv) trade marks registered under international arrangements which have effect in
the Union;
- (b) applications for the trade marks referred to in point (a), subject to their registration;
- (c) trade marks which, on the date of application for registration of the EU trade mark,
or, where appropriate, of the priority claimed in respect of the application for
registration of the EU trade mark, are well known in a Member State, in the sense in
which the words 'well known' are used in Article 6 bis of the Paris Convention.
- Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered
where an agent or representative of the proprietor of the trade mark applies for registration
thereof in his own name without the proprietor's consent, unless the agent or representative
justifies his action.
- Upon opposition by the proprietor of a non-registered trade mark or of another sign used in
the course of trade of more than mere local significance, the trade mark applied for shall
not be registered where and to the extent that, pursuant to Union legislation or the law of
the Member State governing that sign:
- (a) rights to that sign were acquired prior to the date of application for registration of the
EU trade mark, or the date of the priority claimed for the application for registration
of the EU trade mark;
- (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade
mark.
- Upon opposition by the proprietor of a registered earlier trade mark within the meaning of
paragraph 2, the trade mark applied for shall not be registered where it is identical with, or
similar to, an earlier trade mark, irrespective of whether the goods or services for which it
is applied are identical with, similar to or not similar to those for which the earlier trade
mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a
reputation in the Union or, in the case of an earlier national trade mark, the trade mark has
a reputation in the Member State concerned, and where the use without due cause of the
trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive
character or the repute of the earlier trade mark.
- Upon opposition by any person authorised under the relevant law to exercise the rights
arising from a designation of origin or a geographical indication, the trade mark applied for
shall not be registered where and to the extent that, pursuant to the Union legislation or
national law providing for the protection of designations of origin or geographical
indications:
(i) an application for a designation of origin or a geographical indication had already
been submitted, in accordance with Union legislation or national law, prior to the
date of application for registration of the EU trade mark or the date of the priority
claimed for the application, subject to its subsequent registration;
(ii) that designation of origin or geographical indication confers the right to prohibit the
use of a subsequent trade mark.