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

AIPPI BALTIC CONFERENCE Enforcement of IP rights and survival in new environment April 19-21, 2011 Riga, Latvia. Is Use of a CTM in a single Member State Use „in the Community”?. Dr. Aron Laszlo SBGK Patent and Law Offices 21 April 2011. The ONEL Issue.

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

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  1. AIPPI BALTIC CONFERENCE Enforcement of IP rights and survival in new environment April 19-21, 2011 Riga, Latvia Is Use of a CTM in a single Member State Use „in the Community”? Dr. Aron Laszlo SBGK Patent and Law Offices 21 April 2011

  2. 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

  3. 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 Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

  4. OHIM • current OHIM Manual & Guidelines • Genuine use within the meaning of Article 15 CTMR may be found also whenthe criteria of that article have been complied with in only one part of theCommunity, 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 JointStatements by the Council and the Commission Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

  5. 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” Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

  6. 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” Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

  7. 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) Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

  8. 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 Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

  9. Pros and Cons I. • Pro ONEL • CTM nottoreplacenationalmarks • CTM designedforfirmswithactivityonCommunitylevel • ConversionArt. 112(2)(a) CTMR • Contra ONEL • CTMs and nationalmarkshappilycoexist • Firmsmaynot be abletoassesstheirneedsatthebeginning • AgreementbetweenSwitzerland & Germany • Differentrequirements Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

  10. Pros and Cons II. • Pro ONEL • UseinMaltavsuseinGermany • UseinEstonia and LatviavsuseinGermany • 12 >>> 27 MSs • Contra ONEL • Unitarycharacter • Market boundariesvsStateboundaries • Dependingonproductalso (e.g. pálinka) • „Genuineuse” conceptsleavesgroundforinterpretation Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

  11. Pros and Cons III. • Contra ONEL • Choice b/w nationalTMs and CTM • Oppositionsunchanged • Facilitatesmovementfrom MS >>> EU • Ensurespriorityforfutureexpansion • EU-wideenforcement • Maintenanceeasier • Pro ONEL • UnnecessaryCTMs • Clearancefrustrating • Feesvsvalue • Hindersthe free movement of goods • DisadvantegousforSMEsfocusingonone MS • Inter-stateusein US Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

  12. 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 Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

  13. 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? Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

  14. 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 Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

  15. 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 Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

  16. Thank you for your attention! Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia

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