Geographical scope of trademark use in the EU as interpreted by OHIM and member states

1. Geographical scope of trademark use in the EU asinterpreted by OHIM and member states dr. Áron M. László SBGK Patent and Law Offices Linkedin & Inta My Powerful Network Breakfast Meeting San Francisco

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: • 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

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. 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”

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”

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)

8. CJEU • 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

9. Latest in OHEL • CJEU to give a preliminary ruling (01.02.2011) • 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?

10. Solution • ECJ ruling or express legislation needed • Max Planck study • issue should be left to the CJEU to decide • the solution should not be one that takes political boundaries into consideration • Intervening rights • limited use of CTM, 15 years, distant territory, good faith • Expected solution: • market approach • Opinion: Austria should not suffice

11. Thank you for your attention!