international trademark association use by one nation is the trustee of posterity? geographically...

INTERNATIONAL TRADEMARK ASSOCIATION

Use by One Nation is the Trustee of Posterity?

Geographically limited use of a CTM in the EU?

Dr. Áron LÁSZLÓ

Hungary – SBGK Law Firm


The Issue• Is the use of a CTM in one Member State

sufficient to defend against non-use?– Yes– No– Well, it depends…


The Law• 10/12/1993 CTM Regulation (+ historical):

– 40/94 EC Art. 15 „the proprietor has not put the CTM to genuine use in the Community”

• 22/10/1995 Joint Declaration:– “The Council and the Commission consider that genuine use in the

sense of Article 15 in a single country constitutes genuine use in the Community”

– C-292/89 Antonissen case – on declarations– C-418/02 Praktiker – on the Joint Declaration


OHIM• current OHIM Manual & Guidelines

– Genuine use within the meaning of Article 15 CTMR may be found also when the criteria of that article have been complied with in only one part of the Community, such as in a single Member State or in a part thereof.

– The sufficiency of use in only a part of the Community is reflected in the Joint Statements by the Council and the Commission


The ECJ• No actual jurisdiction on the subject yet• Ansul (C-40/01)

– On the concept of genuine use

• La Mer (C-259/02)– A single agent in a single member state may be just fine

• Hiwatt (T-39/01)– „the mark must be present in a substantial part of the territory

where it is protected”


The ECJ• Pago (C-301/07)

– Is a CTM protected in the whole Community as a “trade mark with a reputation” if it has a “reputation” only in one Member State?

– a CTM must be known by a significant part of the public concerned by the products or services, in a substantial part of the territory of the Community

– „the territory of the MS in question [Austria] may be considered to constitute a substantial part of the territory of the Community”


The ECJ• DHL vs. Chronopost (C-235/09)

– Case pending before ECJ

– Injunction based on a CTM awarded by a CTM court with jurisdiction to the entire Community should be limited to where infringement has been actually established?

– Language, culture, reputation

– Advocate General (Cruz Villalón): geographic scope of an injunction should correspond with the geographic extent of the infringement


The Dissenters• 15/01/2010 – Benelux, „ONEL”

– use only in the Netherlands not sufficient

• 11/02/2010 – Hungary, „C City Hotel” – use only in part of the UK and in the

Internet not sufficient – no to automatism

• 05/03/2010 – Denmark, announcement– use in a very limited part of the Community seems not to fulfill the purpose

and the intentions of the CTMR


Pros and Cons I.Pro ONEL

• CTM not to replace national marks

• Coexistence preferred• CTM designed for firms with

commercial activity on Community level

• Conversion• 12 >>> 27 MSs

Contra ONEL• CTMs and national marks

happily coexist• Marks coexist• Firms may not be able to

assess their success at the beginning

• No clear, concrete, pratical options so far


Pros and Cons II.Pro ONEL

• Use in Malta vs use in Germany

• Use in Estonia and Latvia vs use in Germany

Contra ONEL• Unitary character• Market boundaries vs State

boundaries• Depending on product also (e.g.

pálinka)• „Genuine use” concepts leaves

ground for interpretation


Pros and Cons III.Pro ONEL

• Unnecessary CTMs

• Clearance frustrating

• Fees vs value

• Hinders the free movement of goods

• Disadvantegous for SMEs focusing on one MS

• Inter-state use in US

Contra ONEL• Choice b/w national TMs and

CTM• Facilitates movement from MS

>>> EU • Ensures priority for future

expansion• EU-wide enforcement cheaper• Maintenance easier


Pros and Cons IV.Pro ONEL

• Applicant has 5 years to decide if will use CTM in the EU (CTM provides for priority)

• If not used inter-state for 5 years, no use defending

• Plays into the hands of competitors

• Art. 112(2)(a)

Contra ONEL• CTM applicants stimulate unity of

EU• Applicant uncertain wheather will

use CTM in EU must register a national TM

• Plays into the hands of national TM offices

• Diff. requirements


The Latest in ONEL• The Court of Appeal of the Hage proposed a request for

preliminary ruling (30.11.2010)• Taking into account the decisions of the Court of Justice in the cases Ansul, La Mer Technoloty and

Sunrider, for the moment the court is of the opinion that “genuine use” is a autonomous concept, that the territorial scope of such use is only one of the factors to be taken into account when assessing whether the (prior) mark has been genuinely used for the goods or services in question and that the required territorial scope of the use of the Community trademark does not need to correspond with the territory of all member states of the Community, and also that use in only one member state does not necessarily lead to the conclusion that genuine use in the Community is out of the question.

• The court is of the opinion that from this (the preambles of the CTMR), different from what Hagelkruis argues, it follows that according to the CTMR primacy is with the Community trademark but that there remains room for national marks


The Latest in ONEL• Questions to the ECJ proposed by the Court of Appeal

of the Hage proposed:

1. Should article 15(1) CTM be interpreted in such a way that the use of a trade mark within the borders of one Member State is sufficient, provided that this use, if the trade mark would be a national trade mark, would be considered to be normal use in that Member State (compare Joint Statement Nr. 10 to Article 15 CTM original version and the Opposition Guidelines)


The Latest in ONEL:2. If no, is use within one Member State never normal use within the EC

as referred to in article 15 CTM? If yes, which requirements are applicable with regard to the territorial scope of the use of a trade mark – apart from the other circumstances – to assess a normal use within the Community?

3. If the answer to question 1 should be in the negative, should the assessment of normal use within the Community be abstracted from the borders of the territory of the separate Member States and solely linked up with the market shares of the trade mark (and/or other factors) on the various markets within the Community?


The Most Recent Case• Euprax Perchtold & Partners vs. ZOBU B.V. (Case Nr.:

310347 / HA ZA 08-1452)• Infringement proceedings before the court in the Hague• Counterclaim for a declaration of invalidity for non-use • use only in Germany• Proceedings stayed pending decision in ONEL


The Latest• Max Planck Study

– Study on the functioning of the European Trade Mark systems– To be published only partly– Impact study to be published only in autumn along with

amendment proposals

• Discussion in EU Parliament (21.09.2010)– Infringement proceedings against dissenters?

• Hungarian EU Presidency in the first half of 2011


The Solution?• ECJ ruling or express legislation needed• Max Planck study much awaited• Proposed solutions:

– One member state is sufficient– Geographical / market approach– Inter-state commerce needed– 1 MS in the first 5y, 2 MSs in the first 10y– Blend of the above


The End

Thank you for your attention!

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