You might know about all there is to know about using a trademark in your own jurisdiction — but when your marketing colleagues ask you if they can export the company’s products abroad, will you be able to answer their basic trademark concerns?
If not, tomorrow’s session on trademark use will provide some useful pointers to help you protect your marks overseas, and offer some salutary lessons to remind you of the dangers of getting your strategy wrong.
“We want to explain what you need to do to obtain and maintain your trademark and what to do if you or your rival hasn’t used a mark,” says Thomas Raab of Taylor Wessing in Germany. “We find that this is an issue for many companies from the U.S. Some just assume that they can simply use their mark in Europe once they decide to enter the European market only to find that someone has registered it here already.”
Although a company may be able to show that the registered trademark owner acted in bad faith in these kinds of situations, doing so can be a costly and time-consuming exercise—and in many cases the successful applicant may have registered its mark legitimately, creating plenty of headaches for the trademark counsel.
The speakers will also consider the different rules around the world for registering trademarks. In the U.S., for example, applicants need to be careful to ensure that they have a genuine intent to use the mark on specific goods or for specific services. In contrast, applicants in Europe can register in as many classes as they wish—as long as they pay to do so. They then have a five-year grace period in which to decide whether to maintain the mark within that class. “That gives quite a big margin for applicants to consider their commercial strategy,” says Raab. But he warns clients that if they do not use the mark within that time, they risk being unable to enforce their rights.
The session will also touch upon one of the hottest topics in European trademark law: whether use in one member state constitutes genuine use of a Community trade mark (CTM) (see box). Trademark lawyers are divided on how they think this saga might be resolved by Europe’s courts or the European Commission, but Raab errs on the side of caution when advising clients: “I don’t think companies should feel safe if they are using a CTM in just one EU member state.”
The Onel dispute
In January, in a dispute over the trademarks OMEL and ONEL, the Benelux IP Office ruled that use in the Netherlands alone was not genuine use of a Community trade mark.
That decision has now been appealed to the Court of Appeal in The Hague, and a reference to the ECJ is expected. Shortly after the decision Hungary’s Patent Office rejected a trademark opposition based on a CTM that was used in only one EU member state when it refused an opposition filed by City Inn Ltd, which owns a CTM for CITY INN, against a Hungarian application for C CITY HOTEL.
The Office rejected the interpretation of the Regulation given in a joint statement of the EU Commission and Council from December 2003, which said that “genuine use” can be use in one country only, calling this “a most restrictive interpretation.” It added that, given the growth in the EU from 12 to 27 member states, the view expressed in the joint statement “would be contrary not only to common sense but also to sensible economic considerations.” Instead, said the Office, “the sufficient scale of genuine use cannot be determined on the basis of a quantitative and mechanical approach linked to national borders.”
The Danish IP office then waded into the debate when it issued a statement in March stating that “use in a very limited part of the Community seems not to fulfill the purpose and the intentions of the European trademark regulation. On the other hand, it seems too restrictive to demand that the European trademark is used in all 27 member states. The answer must lie somewhere in the middle.”
OHIM itself has said that, pending any appeal in the case, it “continues to consider that boundaries of Member States should not play a part in assessing ‘genuine use’ within the EU Single Market.”
The question of what constitutes genuine use of a CTM is one of the issues that the Max Planck Institute will address into its study of the Community trade mark, which it is carrying out at the request of the European Commission and in which INTA is participating. The study is expected to be completed before the end of the year.