a) has the stipulation of Article 5(2) of the Directive been adopted literally into your national law?

B. Have those provisions been established as a consequence of harmonization of the national trademark law in your country, that is to say, in order to nationally realize the option granted by Article 5(2) of the Directive? If so, a) has the stipulation of Article 5(2) of the Directive been adopted literally into your national law? b) has the option of Article 5(2) been adopted into your national law, but not literally? If not literally adopted, are the deviations from the text from Article 5(2) held to be essential? c) In case of literal adoption [B)a)], does legal opinion (Courts/legal authors) in your country hold that your national adoption of Article 5(2) of the Directive belongs to harmonized law, that is to say, has to be interpreted in line with the rules of the ECJ? d) In case of literal adoption [B)a)], if legal opinion in your country holds that your national adoption of Article 5(2) of the Directive does not belong to harmonized law, that is to say, has not necessarily to be interpreted in line with the rules of the ECJ, kindly outline the main arguments for this opinion. e) In case of non-literal adoption of Article 5(2) of the Directive [B)b)], does legal opinion in your country hold that your national adoption of Article 5(2) of the Directive belongs to harmonized law that is to say, has to be interpreted in line with the rules of the ECJ? f) In case of non-literal adoption of Article 5(2) of the Directive [B)b)], does legal opinion in your country hold that the national adoption of Article 5(2) of the Directive D in your country does not belong to harmonized law, that is to say has not necessarily to be interpreted in line with the rules of the ECJ but may be interpreted by the Courts of your country according to genuine national law principles? Missing inputs:./. Lack of representation: Lithuania, Slovakia B. In 17 countries, namely, Austria, Benelux, Czech Republic, Estonia, Finland, France, Germany, Greece, Ireland, Italy, Latvia, Poland, Romania, Spain and partly the UK, national provisions reflecting Article 5 (2) of the Directive have been established as a consequence of harmonization of the national trademark law. a) Article 5(2) of the Directive has been adopted literally into the national law in Austria, Benelux, Czech Republic, Estonia, Germany (almost so), Greece, Ireland, Malta (by advanced legislation), Poland, and Romania. b) 5 countries, namely Finland, France, Italy, Latvia and Spain did not literally transpose Article 5 (2) into national law. In 4 of these countries the deviations are not deemed to be essential. In Spain the deviation is deemed to be essential. In addition, in the UK the deviation is deemed to be essential as the national provision is wider than Article 5 (2) of the Directive as the reference to dissimilar goods has been removed. ECTA Secretariat, Rue des Colonies 18/24, 9th Floor, BE- Brussels, Belgium Tel 32/2-513 52 85 Fax 32/2-513 09 14 E-Mail ecta@ecta.org Internet http://www.ecta.eu A company limited by guarantee. Reg. in England and Wales No. 1520996. Reg. address: 15 Southampton Place, London WC1A 2AJ, England. VAT No. BE0851518062

c) In 10 countries, the national provisions are considered to belong to harmonized law. In 2 countries, namely the Czech Republic and Germany (prevailing opinion) the national provisions are considered not to belong to harmonized law. e) For the 5 countries concerned and the UK the answers were in the affirmative, the national provisions are considered to belong to harmonized law. g) From the answers to B. e) follows that the answers to this question were no. The individual answers of the member countries are as follows: Austria a) c) Benelux a) c) Bulgaria No Cyprus No, these provisions were pro-existing in the principal Trade Marks Law Cap 268. b) It was already in the Law and it leads to the same meaning of Article 5(2). The deviations from the text from Article 5(2) are not essential, they are very minor. e), it has to be interpreted in line with the rules of the ECJ. f) Even tough there were pro-existing provisions in the national law, these provisions harmonize with Article 5(2) of the Directive. Therefore, our provisions belong to harmonized law and we necessarily interpret in line with the rules of the ECJ. Czech Republic Denmark a) c) As a part of Act. No. 441/2003 Coll (Act on Trade Marks) it belongs to the Czech legal order. No, the Danish trademarks Act did contain provisions rendering a broader protection to wellknown marks prior to the implementation of the trademark directive but the implementation of the directive has broadened the scope of protection of wellknown trademarks. but the contents is the same b) The wording who does not have his consent has been abolished but it is implied in the relevant provisions that they apply only when a consent from the proprietor of the wellknown mark has not been obtained. c) N/A Project (10) Summary and compilation of answers to Question B 2

e) It follows from court decisions that the provisions regarding wellknown trademarks in the Danish Trademarks Act are also interpreted in line with ECJ decisions. Estonia a), the stipulation of Article 5(2) of the Directive has been adopted literally into our national law. b) No comments c) The general legal opinion is that such national provisions deriving from EU legislation contain harmonized law and must be interpreted in line with the rules of ECJ. d) No comments e) No comments f) No comments Finland b) No e) France The special protection of well-known trademarks existed before the introduction of the harmonized law. However, this protection was granted by the courts in application of general principles of liability for damages in civil matters and did not result from provisions of the Trademark Law of December 31, 1964. b) Paul Mathély, in Le nouveau droit français des marques» (Editions J.N.A.) says that the French legislator wanted to adopt the option granted by the Directive by laying down the provisions of Art. 16 of the Trade Mark Law of January 4, 1991 (now codified as Art. L 713-5 of the Intellectual Property Code), but that the drafting of the provision is increadibly awkward (d une incroyable maladresse). However, as far as I know, possible discrepancies were never dealt with in court. e) According to the above, the French national provisions have to be considered as harmonized law and as such will be interpreted by the French courts à la lumière de la directive (in the light of the directive), following the case law of the ECJ. Germany a) almost so b)./. c) The legal opinion is divided on this issue. 1. One opinion emphasizes that transposition of Art. 5 (2) of the Directive into national law is not obligatory but facultative ( Any member state may also provide that ). This being so, Section 14 (2) No. 3 German Trademarks Act does not fall under harmonized law but under the sovereignty of the national legislator. ECJ decisions interpreting Art. 5 (2) of the Directive are not binding German courts regarding the interpretation of the corresponding German provision. However, ECJ decisions are not entirely irrelevant, in particular as Art. 5 (2) of the Directive has been transposed literally into the German provision. ECJ decisions are considered in the nature of guidelines. Project (10) Summary and compilation of answers to Question B 3

2. A contrarious opinion holds that the competence of the ECJ regarding the interpretation of Art. 5 (2) of the Directive strictly binds the German courts as regards the interpretation of the German corresponding provision in Section 14 (2) No. 3 German Trademarks Act, which is also the opinion of the ECJ. d) see above e) N/A Greece a) c) In most cases Hungary Regulation about notoriously known trade marks already existed in Hungary before, and the Hungarian Trade Mark Act was amended many times, also connected with the country s accession to the European Union. b) 1 st question: 2 nd question: No e) f) No. The national adoption of Article 5(2) of the Directive has to be interpreted in line with the rules of the ECJ. Ireland a) Under Section 14(3) of the Trade Marks Act, 1996 b) N/A c) Irish Trade Mark Law will be interpreted in line with the rules of the ECJ. e) N/A Italy b) 1 st question: 2 nd question: No e) f) No Latvia b) 1 st question: 2 nd question: No e) Project (10) Summary and compilation of answers to Question B 4

f) No Lithuania ------------------------ Malta They were adopted as part of adoption of the ACQUIS COMMUNAUTAIRE, in order to pave the way for Malta s accession to the EU on 1 st May 2004. a) b) N/A c) There are no local court pronouncements yet as far as we are aware, however in our reasoned view a local Court would adopt the approach that the provisions of local law should be interpreted in line with the rules of the ECJ. e) N/A Poland a) c) Portugal Articles 242 and 266/1/a have been established as a consequence of what is provided for in article 4(3) of the Directive (protection of CTM with reputation for dissimilar goods, which is mandatory) and in article 4/4/a also of the Directive (protection of national trade marks with reputation for dissimilar goods, which is optional). However said provisions refer only to grounds for refusal or invalidity actions. Article 5(2) of the Directive (right to prevent use) was not implemented as such. Nevertheless, article 323/e establishes criminal protection for the use of marks with reputation for dissimilar goods. According to this provision it is a criminal offence punishable with up to 3 years imprisonment or fine, the use without consent of the owner, of identical or similar trade marks even for goods or services which are not similar to those for which the earlier trade mark is registered, if the earlier mark has a reputation in Portugal or for Community trade marks, in the Community, where the use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character of the repute if the trade mark. The legal situation is therefore somewhat strange with regard to protection of trade marks with reputation against mere use. The owner of a trade mark with reputation could not react against mere use of the same or similar mark for dissimilar goods through a civil action but he might be given the possibility to file a criminal complaint depending on the infringer s intention.. Please see B). b) In the relevant part, Article 323/e (please see B)) adopts the same text of the Directive. There are no relevant deviations. c) No d) No Romania Project (10) Summary and compilation of answers to Question B 5

a) c) Slovakia ------------------------ Slovenia The special protection of well-known trademarks in the sense of the above cited point c) of 44 Article of the IP Act was accepted already under the IP Act from 1992, whereas both points cited above were introduced already under the amendments of the IP Act adopted in year 2001, which means before the accession of Slovenia to the EU in 2004.. b) The discrepancies have never been dealt with in court and have had no essential effect on the practice. e) The Slovenian national provisions have to be considered as harmonized law and as such will be interpreted by the Slovenian Court, following the case law of the ECJ. Spain t literally b) e) Sweden No, it was already established in 1970 c) No, the Swedish Trade Mark Law Art. 2 is in accordance with Art. 5 (2). d) See the above e) See the above f) See the above UK Partly b) the relevant provision is wider than the Directive as the reference to dissimilar goods has been removed. e) f) No Project (10) Summary and compilation of answers to Question B 6