"No comments", but plenty of comment: more on "genuine use" in Europe

Not just a European debate: even "outsiders"
from the old colonies are welcome to have their say

"No news is good news", according to the proverb, but "no comment" gives less ground for celebration.  The IPKat's post yesterday, "A kick in the gulyás? Hungary, Benelux stewed by Europe's finest" (here) attracted just one posted comment, but his email has been bubbling with ideas, suggestions and opinions from readers, some of whom are reluctant to be identified with the position they have taken in case what they say is considered legally incorrect by others with whom they work or because they don't want to alienate respected persons and firms in which prominent trade mark lawyers have taken a line which strongly opposes their own.

One correspondent who bravely agrees to be named is the highly experienced and well respected Dan Bereskin (Bereskin & Parr, Toronto), a man whose reputation [unlike that of certain trade marks which have been invoked in recent oppositions based on earlier Community trade marks, says Merpel] extends a good deal beyond the national boundaries of the country in which he practises.  Dan writes as follows:

"For me, the issue boils down to whether, after five years, a CTM that is used only in Malta [explanation for non-EU folk -- a very small EU Member State] should entitle the proprietor, even in theory, to block the use and/or registration of a similar sign elsewhere in the EU where the Maltese sign has neither been used nor made known. Any formulaic approach for determining what constitutes "genuine use in the Community" seems unlikely to be successful. My view, innocent as it is of any real understanding of EU law, is that the geographical extent of use sufficient to justify the continuation of a CTM is not really the issue. It is geographical extent to which a CTM should be enforceable after five years, and the ability of the original CTM proprietor to block registration of similar signs for use in regions where the prior CTM has neither been used nor made known.

If the CTMR were amended to allow for a concurrent CTM after five years restricted to geographical areas where the prior CTM has neither been used nor made known to a reasonable extent through advertising, publicity, etc., and if the prior CTM is not enforceable in regions where it has neither been used or made known (such that there would be no likelihood of confusion in fact), I think the question of whether use in one state is sufficient diminishes substantially in importance. Personally, I'd still like to see a requirement for use in commerce between at least two EU states after five years, but that issue seems less important to me than the issue of concurrent use/registrability".

Coincidentally, Australian-in-England solicitor and blogger Rebecca Dimaridis has posted the following suggestion on her weblog this morning:

"I am thinking along the following "compromise" position. If I was to start up a small business, and wanted a CTM, I would think the following genuine use requirements would be fair:

* within 5 years in at least 1 member state;
* within the next 5 years in at least I other member state.

So essentially requiring genuine use in a 2nd member states within the first 10 years. That way, I could get myself up & going in 1 member state within the first 5 years. But what I can't say with enough authority is just how difficult or long it would take to start up a business in another member state.Would a total of 10 years actually be enough? Would it be right to say that if I'm not ready to launch in the next member state after the first 5 years, I probably won't be ready to launch at all? Or would it be more reasonable to allow for say 8 or 10 years for the 2nd member state?"

The IPKat suspects that we may be seeing more discussion along these lines.  It would be good to hear some comment, whether attributable or anonymised, from some brand owners themselves and not just from practitioners in private practice.