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Protect your rights in Europe

With a single market of 500 million people across 27 countries that some of the world’s richest consumers call home, it is unsurprising that brand owners want to boost their presence in the European Union marketplace. But protecting their trademark rights there can be a tricky business.

While politicians made it easier for them to register their marks on a pan-EU basis by launching the Community trade mark (CTM) 16 years ago, a patchwork of national laws runs parallel to the CTM system, making it essential for IP owners to understand the rules if they want to maximize their rights.

Panelists in two sessions at the Annual Meeting will introduce them to a series of important issues in European trademark law. The first focuses on filing strategies by considering the advantages (and disadvantages) of using the Madrid Protocol, CTM and of dropping national marks in Europe altogether. It also examines the rules governing the use of a modified mark, and the vulnerability of your mark to attacks on the grounds of non-use. The second session will look at the legal impact of using an unregistered mark—and of not using a registered mark.

Eric Bakker of Bakker & Verkuijl, who will moderate tomorrow’s session, will summarize some recent disputes in Europe relating to use of a modified mark and explain how that puts the owner at risk of a challenge for non-use. Three cases are now before Europe’s highest court, the Court of Justice of the EU, which is set to outline how national courts should interpret EU trademark law on this issue. In the first, the Court will consider whether the owner of the marks PROTI, PROTI POWER and PROTIPLUS should be allowed to maintain the registration for PROTI, even though a rival claimed that it had not genuinely used the mark.

The Court is also set to decide a dispute between apparel company Levi Strauss & Co. and a retailer. Levi Strauss owns a trademark for a blank red tab made of cloth, which appears on the pocket of its jeans. When it accused a business rival of infringement, the defendant claimed the plaintiff had used the red tab only as a red tab with the word LEVI’S and said that only the use of this mark (which was also registered) was genuine.

The third case is between UK optician chain Specsavers and supermarket Asda. The Court of Appeal in London has asked judges in Luxembourg a series of questions, including whether a company’s enhanced reputation in a color can be taken into consideration in an issue of consumer confusion, even though the trademark had not been registered in colour.

“The issue of use is especially important for logos and device marks which tend to be updated and evolve over time,” says Bakker. “Trademark owners and their counsel should be even more careful when it comes to these marks in deciding what they should file for and how they use their marks.”

Community trade marks: reforming the system

1996The Community trade mark (CTM) system is launched. The Office for Harmonization in the Internal Market (OHIM) receives more than 40,000 CTM applications in first year and some EU member states begin to fear that national filings will slump.

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