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Introduction to genuine use in the Community
Genuine use
Article 15(1) CTMR provides statues of when the CTM shall be subject to the sanctions provided in the regulation:
“If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered…”
In the question of the term use, it is necessary for the use to be compatible with the fun-damental purpose of trade marks, namely to guarantee origin. Accordingly, it must be actual use, where the consumers can benefit from the trade mark by means of the func-tions behind it, for example to assure the consumer of the identity of origin. If there is no use at all or not in a way to ensure the consumer of the origin, it does not constitute use.15
In the Ansul case the ECJ ruled in the matter of the term genuine use, stating that token use or internal use is not permissible. However, advertising campaigns for products soon to be marketed under the sign are to be recognised as use.16 The use must be a step towards acquiring a share in the market for those products. Concerning this test the court held that a case-by-case assessment is required where the result depends on the relevant goods or services, the regularity and the frequency of the use. However use is deemed to be acceptable if it is in connection with after-sale services on products that no longer are sold on the market.17 In the case of La Mer Technology the court said that it is also genuine use when the trade mark has been used on products sold to agents or similar. The ECJ also emphasised that not even a minimal use of the mark (in this case in the UK) hinders it from being genuine.
The nature of genuine use for non-profit-making associations on the other hand is de-termined when:
“a trade mark is put to genuine use where a nonprofit-making association uses the trade mark, in its relations with the public, in announcements of forthcoming events, on business papers and on advertising material and where the association’s members wear badges featuring that trade mark when collecting and distributing donations.”19
In consequence, the test of genuine use has until now focused on a qualitative aspect.
‘In the Community’
According to article 15(1) of the CTMR a requirement for genuine use is that the use is in the Community. The CTMR itself does not deal with the question of the geographical extent of use necessary. Neither has the question been subject to a ruling by the ECJ. However, the CTMR has the exact wording as the first regulation20, to which the Joint Statements apply. It is said in the Joint Statements: “The Council and the Commission consider that use which is genuine within the meaning of Article 15 in one country con-stitutes genuine use in the Community.”21
Even though the Joint Statements have interpretative value, they are not legally binding, as laid down by the ECJ in Antonissen.22 However, OHIM complies with these state-ments.23 In spite of this, the only existing and relevant case law, have come from na-tional courts that have turned their backs on the consideration in the Joint Statements.
The Benelux and Hungarian approach to the extent of use
Important to bear in mind when reading this chapter and the paper in general, is the fact that the Benelux and Hungarian approach is a highly topical phenomenon brought to the public not earlier than in November 2009. As for the case law from these countries, it is as up-to-date as from January and February 2010. Thus it is an outcome of views that have not been discussed earlier and not much material is available on the subject yet. This way of asserting genuine use goes against the general point of view found in the Joint Statements. Therefore it has resulted in a lot of controversy and is the subject of much debate.
The debate began with two presentations at a Conference concerning the CTM system. The presentations were held by Dr Mihály Ficsor, Vice-President of the Hungarian Pat-ent Office, and Mr Edmond Simon, Director General of the Benelux Office for Intellec-tual Property.24 At the conference they both agreed that use in one single country does not suffice as genuine use.
Shortly after the presentations by Dr Ficsor and Mr Simon, their position was found in case law. The recent case of ONEL (15 January 2010) in the Benelux, is the first case to settle a question concerning: if use in one Member State is enough to authorise protec-tion throughout the EU.25 The circumstances of the case involved the registered CTM ONEL used only in the Netherlands, and an opposition by its holder towards the appli-cation of the trade mark OMEL. The proprietor of OMEL stressed that he would not use the mark in the same territory, but in Scandinavia. The Benelux Office of Intellectual Property (BOIP) ruled that use in merely one country does not constitute genuine use in the Community.
The Hungarian Patent Office (HPO) gave a statement on its position regarding the geo-graphical extent of the genuine use requirement. It reminded that the ECJ has not yet decided in such a matter and that the HPO itself agrees with the judgment by BOIP in the ONEL case.26 In its statement, the HPO emphasises that the national courts and au-thorities have the same right to interpret the geographical extent of genuine use as the OHIM, and that these decisions should be „respected‟ by all until the ECJ rules in the matter (which would be appreciated in respect of legal certainty).27
Not long after the statement by the HPO, the HPO itself ruled in behalf of the defendant in an opposition proceeding on 11 February 2010.28 The reason for the decision was the fact that the CTM had not been used in more than one Member State.
The case concerned an application by a Hungarian company for the CTM C City Hotel, which was opposed by a UK company with the CTM CITY INN. The opposing com-pany claimed that there was a likelihood of confusion between the marks. The HPO held that protection for the opposed mark is not precluded in this case, due to non-use of the earlier mark by the UK company. The mark had been used in several cities, but none of which were outside the UK. In respect of this, the court did not consider the use to be sufficient use in the Community.
It is likely that these cases reach the ECJ through an appeal or similar cases are brought to the court. If this occurs, the ECJ will most likely base its ruling on linguistic, system-atic and teleological arguments, the most central ECJ approaches when interpreting.29 Therefore, this paper have used these interpreting methods when asserting the nature of „genuine use in the Community‟.
1 Introduction
1.1 Background
1.2 Purpose and limitations
1.3 Method and material
1.4 Outline
2 Introduction to genuine use in the Community
2.1 Genuine use .
2.2 ‘In the Community’
3 The Benelux and Hungarian approach to the extent of use
4 Linguistic interpretation of genuine use in the Community
4.1 The Linguistic approach
4.2 Analysis of the linguistic approach
5 Systematic interpretation of genuine use in the Community
5.1 The systematic approach
5.2 Analysis of the systematic approach
6 Teleological interpretation of genuine use in the Community
6.1 Purpose of article 15(1) CTMR
6.2 Function of article 15(1) CTMR
6.3 Effect of article 15(1) CTMR
7 Comparative interpretation
7.1 Comparative interpretation
7.2 Analysis of comparative interpretation
8 Substantial part of the territory
8.1 The application of substantial part of the territory
8.2 Analysis of substantial part of the territory
9 A market-oriented approach to the extent of use
9.1 A market-oriented approach
9.2 Analysis of a market-oriented approach
10 Conclusion
List of references
Bachelor’s Thesis in Commercial Law (Intellectual Property Law)
