Genuine use of a Community trade mark: MARQUES speaks out

Wasting no time in (i) issuing a decisive statement and (ii) agreeing with the position taken by the IPKat himself, European trade mark organisation MARQUES has come down firmly against the controversial ruling of the Benelux Office for Intellectual Property (BOIP) that the use of a Community trade mark in just one of the 27 Member States of the European Union did not constitute "genuine use" on the part of an owner relying on that mark in opposition proceedings against a later and undeniably similar mark.

Right: MARQUES has roared -- but will BOIP hear the message?

Says MARQUES (in relevant part):

" ... MARQUES works actively to ensure that businesses are involved and duly represented in the debate surrounding developments of the systems they use to protect their trade marks. That is the reason why MARQUES wishes to make a statement in connection with the recent ruling by the Benelux Office for Intellectual Property (the Leno Merken B.V./Hagelkruis Beheer bv case [on which, see earlier IPKat postings here and here, together with some perceptive comments by readers on both sides]).

The referred Decision from the Opposition Division of the BOIP of 15 January 2010 states in summary that use of a CTM in one EU Member State is not sufficient to constitute genuine use within the meaning of the Trade Mark Directive and CTM Regulation.

MARQUES disagrees with the interpretation of the concept of genuine use contained in the ruling of the Benelux IP Office on the basis of the following considerations.

MARQUES considers that the ruling is contrary to the concept of one single unitary trademark right conferred under the CTM system and seriously jeopardises this concept. Neither the CTMR nor the case law of the ECJ gives any support to the ruling of the BOIP. Genuine use in the EU has been interpreted as meaning that the mark is used in accordance with its functions, which are to guarantee the identity of the origin of the goods or services for which it is registered, to constitute a guarantee of the products/services in question, and those of communication, investment or advertising (Case C-487/07 L’Oreal SA and Bellure NV).

When assessing that, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real (Case C-40/01 Ansul BV and Ajax Brandbeveiliging BV).

Furthermore, it has also been stated that use of the mark may in some cases be sufficient to establish genuine use within the meaning of the Directive, even if that use is not quantitatively significant (Case C-259 La Mer Technology Inc. and Laboratories Goemar SA). Indeed, the European Court of Justice ruled that even minimal use can be sufficient to qualify as genuine, on condition that it is deemed to be justified, in the economic sector concerned, for the purpose of preserving or creating market share for the goods or services protected by the mark. The question whether use is sufficient to maintain or create market share for the goods or services protected by the mark thus depends on several factors and on a case by case assessment (Case T-191 Anheuser Busch Inc and HIM).

By way of analogy, the Court of Justice was already asked to state whether “reputation in the Community” was satisfied in case where the CTM had a reputation in only one Member State (Case C-301/07 Pago International GmbH and Tirolmilch registrierte Genossenschaft mbH). The Court ruled that the condition should be considered to be fulfilled when the CTM had a reputation in a substantial part of the territory of the Community. At that case, the territorial requirement was considered satisfied with regard to a single Member State, namely Austria. As a conclusion, the territory of a single Member State may be considered to constitute a substantial part of the territory of the Community.

In the light of the foregoing, MARQUES is of the opinion that the BOIP Opposition Decision in question contradicts the uniform interpretation of the concept of genuine use in the EU. We are of the opinion that the question whether use is sufficient to constitute genuine use relies on all the circumstances relevant to establishing that the use is real. The implementation of such criteria shall not depend on the number of Member States affected by the use of the mark. The opposite interpretation would affect the main principles of the CTM system.

The CTM is one of three options for protection of trade marks in Europe, and the number of CTMs proves the business interest in the system. MARQUES strongly believes in the principle of the unitary character of the CTM and will continue to support this concept".

This statement is signed by Guido Baumgartner (Chairman of Council) and Tove Graulund (who represents MARQUES on the OHIM ABBC). Bravo, says the IPKat. Merpel says, I thought there were only two options for protecting trade marks in Europe -- CTMs and national/regional registrations. Then I remembered, most trade marks are registrable as Community designs too!