Is Use of a CTM in a single Member State Use „in the Community”?

Is Use of a CTM in a single Member State

Use „in the Community”?

Dr. Aron LaszloSBGK Patent and Law Offices21 April 2011

AIPPI BALTIC CONFERENCE

Enforcement of IP rights and survival

in new environment April 19-21, 2011 Riga, Latvia

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

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

Enforcement of IP rights and survival in new environment

AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

The Law• 10/12/1993 CTM Regulation:

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

• 22/10/1995 Joint Statements:– “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– C-104/01 - Libertel– C-418/02 - Praktiker



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



CJEU• 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”



CJEU• 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”



CJEU• DHL vs. Chronopost (C-235/09)

– an order made by a CTM court in respect of a CTM has EU-wide effect even if relief is generally governed in national laws (harmonised by the Enforcement Directive)

– There are two exceptions to this• plaintiff only asks for partial relief• Infringement limited to a part of the EU

• ONEL (pending before CJEU – no case number yet)



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

– use only in the Netherlands not sufficient– preliminary ruling requested from CJEU

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

Internet not sufficient – no to automatism– no appeal

• 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• CTM designed for firms

with activity on Community level

• Conversion Art. 112(2)(a) CTMR

Contra ONEL• CTMs and national

marks happily coexist• Firms may not be able

to assess their needs at the beginning

• Agreement between Switzerland & Germany

• Different requirements

Pros and Cons II.



Pro ONEL• Use in Malta vs use in

Germany• Use in Estonia and

Latvia vs use in Germany

• 12 >>> 27 MSs

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• Oppositions unchanged• Facilitates movement

from MS >>> EU • Ensures priority for

future expansion• EU-wide enforcement• 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

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

Latest in ONEL• CJEU to give a preliminary ruling (1 February 2011)• Questions:

– Is genuine use of a CTM in a single MS sufficient to qualify as genuine use of a CTM?

– If not, does such use of a CTM within a single MS never qualify as genuine use in the Community?

– If not, what are the requirements as to territorial scope?– Alternatively, independent from the frontiers of the MS and

for example market shares (product/geographic markets) shall be taken as a point of reference?



Another case in the Netherlands• 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



Solution?• ECJ ruling or express legislation needed• Max Planck study

– issue should be left to the CJEU to decide, but the solution should not be one that takes political boundaries into consideration

– Intervening rights after 15 years

• Expected solution:– market approach



Thank you for your attention!



Is Use of a CTM in a single Member State Use „in the Community”?

Documents

single member state

ctmr enforcement of

sufficiency of use

ctm court

member state sufficient

single agent

single country

chronopost c