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Use by One Nation is the T rustee of P osterity ?

Use by One Nation is the T rustee of P osterity ?. Geographically limited use of a CTM in the EU? Dr. Áron LÁSZLÓ Hungary – SBGK Law Firm. The Issue. Is the use of a CTM in one Member State sufficient to defend against non-use? Yes No Well, it depends…. The Law.

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Use by One Nation is the T rustee of P osterity ?

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  1. Use by One Nation is the Trustee of Posterity? Geographically limited use of a CTM in the EU? Dr. Áron LÁSZLÓ Hungary – SBGK Law Firm

  2. The Issue • Is the use of a CTM in one Member State sufficient to defend against non-use? • Yes • No • Well, it depends…

  3. The Law • 10/12/1993 CTM Regulation (+ historical): • 40/94 EC Art. 15 „the proprietor has not put the CTM to genuine use in the Community” • 22/10/1995 Joint Declaration: • “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 case – on declarations • C-418/02 Praktiker – on the Joint Declaration

  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

  5. The ECJ • 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”

  6. The ECJ • 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”

  7. The ECJ • DHL vs. Chronopost (C-235/09) • Case pending before ECJ • Injunction based on a CTM awarded by a CTM court with jurisdiction to the entire Community should be limited to where infringement has been actually established? • Language, culture, reputation • Advocate General (Cruz Villalón): geographic scope of an injunction should correspond with the geographic extent of the infringement

  8. The Dissenters • 15/01/2010 – Benelux, „ONEL” • use only in the Netherlands not sufficient • 11/02/2010 – Hungary, „C City Hotel” • use only in part of the UK and in the Internet not sufficient – no to automatism • 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

  9. Pro ONEL CTM not to replace national marks Coexistence preferred CTM designed for firms with commercial activity on Community level Conversion 12 >>> 27 MSs Contra ONEL CTMs and national marks happily coexist Marks coexist Firms may not be able to assess their success at the beginning No clear, concrete, pratical options so far Pros and Cons I.

  10. Pro ONEL Use in Malta vs use in Germany Use in Estonia and Latvia vs use in Germany 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 II.

  11. 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 Facilitates movement from MS >>> EU Ensures priority for future expansion EU-wide enforcement cheaper Maintenance easier Pros and Cons III.

  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 • Art. 112(2)(a) 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 • Diff. requirements

  13. The Latest in ONEL • The Court of Appeal of the Hage proposed a request for preliminary ruling (30.11.2010) • Taking into account the decisions of the Court of Justice in the cases Ansul, La Mer Technoloty and Sunrider, for the moment the court is of the opinion that “genuine use” is a autonomous concept, that the territorial scope of such use is only one of the factors to be taken into account when assessing whether the (prior) mark has been genuinely used for the goods or services in question and that the required territorial scope of the use of the Community trademark does not need to correspond with the territory of all member states of the Community, and also that use in only one member state does not necessarily lead to the conclusion that genuine use in the Community is out of the question. • The court is of the opinion that from this (the preambles of the CTMR), different from what Hagelkruis argues, it follows that according to the CTMR primacy is with the Community trademark but that there remains room for national marks

  14. The Latest in ONEL • Questions to the ECJ proposed by the Court of Appeal of the Hage proposed: 1. Should article 15(1) CTM be interpreted in such a way that the use of a trade mark within the borders of one Member State is sufficient, provided that this use, if the trade mark would be a national trade mark, would be considered to be normal use in that Member State (compare Joint Statement Nr. 10 to Article 15 CTM original version and the Opposition Guidelines)

  15. The Latest in ONEL: 2. If no, is use within one Member State never normal use within the EC as referred to in article 15 CTM? If yes, which requirements are applicable with regard to the territorial scope of the use of a trade mark – apart from the other circumstances – to assess a normal use within the Community? 3. If the answer to question 1 should be in the negative, should the assessment of normal use within the Community be abstracted from the borders of the territory of the separate Member States and solely linked up with the market shares of the trade mark (and/or other factors) on the various markets within the Community?

  16. The Most Recent Case • 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

  17. The Latest • Max Planck Study • Study on thefunctioning of the European Trade Mark systems • To be published only partly • Impact study to be published only in autumn along with amendment proposals • Discussion in EU Parliament (21.09.2010) • Infringement proceedings against dissenters? • Hungarian EU Presidency in the first half of 2011

  18. The Solution? • ECJ ruling or express legislation needed • Max Planck study much awaited • Proposed solutions: • One member state is sufficient • Geographical / market approach • Inter-state commerce needed • 1 MS in the first 5y, 2 MSs in the first 10y • Blend of the above

  19. The End Thank you for your attention!

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