Brands Bulletin - June 2010
Wednesday 2nd June 2010Welcome to this month's Ashfords’ Brands Bulletin.
This month's email is about the major concern raised by a decision of the Benelux Office for Intellectual Property. It implies that hundreds (if not thousands) of Community trade marks may be vulnerable to revocation, on the basis that they have not been put to genuine use in the Community if they have only been used in trade in just one member state of the EU.
GENUINE USE of a CTM- the potentially disastrous implications of the Omel decision for Community trade mark owners
Owners of Community trade marks ("CTMs") are required to put their CTMs to genuine use in the Community within 5 years following registration, failing which their CTMs are vulnerable to revocation on the ground of non-use.
Following a Joint Statement of the EU Council and EU Commission in 1993, it was assumed by owners of CTMs and their professional advisers that genuine use of a CTM in trade in just one member state of the EU would qualify as 'genuine use in the Community'. In practice, this means that the owner of a CTM might use it in trade in, say, the UK only, but still be able to rely on the CTM to prevent anyone else using or registering the same mark, or a confusingly similar mark, in any of the other 26 member states of the EU (e.g. in the Czech Republic, Sweden, Belgium or Hungary).
As a result of this assumption, many brand owners do not register and renew national trade mark registrations in EU countries. Instead, they only register and renew CTMs.
However, a recent decision of the Benelux Office for Intellectual Property ("BOIP") has caused a great deal of concern amongst CTM owners and their professional advisers. In the Omel case, BOIP declared that genuine use of a CTM in just one member state of the EU (in this case, the Netherlands) does not constitute 'genuine use in the Community' of a CTM.
If this is legally correct, it would have significant implications for brand owners who only own CTMs (and not national trade mark registrations in EU countries) and use them in just one EU member state.
It is understood that OHIM (the body that grants CTMs) does not agree with the decision and will not follow it. However, other national courts and trade mark registries located across the EU may be more willing to do so. If that ends up being the case, then the situation will be most unsatisfactory for brand owners, as they might face different legal tests of 'genuine use in the Community' in different EU countries. This is something that the CTM system is supposed to avoid.
The issue is crying out for EU wide clarification. It is hoped that the European Court of Justice will be asked to rule on this issue in the not too distant future.
However, until then, the advice to brand owners must be to file and maintain national trade mark registrations in EU countries (in addition to, or as alternatives to, CTMs) if they intend only to, or do, use their trade marks in just one, or possibly two or three EU member states.
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Ashfords LLP is regulated by the Solicitors Regulation Authority. The information in this note is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.
