As is well known, a Community trademark (CTM) must be put into genuine use within five years of the registration date in order to maintain protection. When the Community trademark was launched in 1996, it was decided politically that use “in the Community” was satisfied by use in one member state. This decision was laid down in a Joint Resolution from the European Commission. The European trademark authority, OHIM, decided to follow this resolution in practice and still does today.
Since then, the EU has expanded as a lot of countries, including smaller countries such as Cyprus and Malta have joined. Consequently, it is ever more discussed whether use in one member state remains sufficient or whether it is time to change this practice. In addition, the Court of Justice of the EU has laid down in a case concerning another legal area that a Joint Resolution is not legally binding. Naturally, this has contributed to the uncertainty as to whether use in one member state is sufficient notwithstanding that OHIM adhere to their practice.
Trademarks in Belgium, the Netherlands and Luxembourg are managed by one communal regional authority. In connection with a trademark case (the ONEL case) in Benelux, this authority has made a decision stating that documentation of use in one member state of the EU is not necessarily enough to document genuine use of a CTM.
The reasoning of the Beneluxian authority is that a trademark right is an exclusive right. In order for this right to endure, it must be put into genuine use. Consequently, it would be contrary to the fundamental consideration of trademark protection if the scope of the protection by far exceeds the geographic area in which the trademark is used.
The delivered judgment will most likely be appealed to the Appellate Court in The Hague. In this connection, the Appellate Court will presumably ask the Court of Justice a number of preliminary questions concerning the interpretation of the geographical requirement in connection with documenting use of a CTM. Hitherto, the Court of Justice has ruled that genuine use in Austria could be sufficient in order to document use of a CTM.
So far the ONEL case leaves an uncertainty concerning the existing practice for documenting genuine use of a CTM. For the time being, OHIM adheres to the practice that use in one member state is sufficient. In addition, OHIM has expressed criticism against the judgment in the ONEL case. Supporters of the opposite point of view argue that a CTM must be put into genuine use in all 27 member states. The relevant Danish authority (the DKPTO) believes that the answer must lie somewhere in between.
An important consideration of the CTM system is the fact that markets/countries are open to competition, i.e. that trademark owners do not have to apply for trademark protection every time they enter a new market within the internal market of the EU. In addition, an intensification of the geographical requirements could make it more difficult for smaller companies to achieve and maintain a trademark registration in the EU. Furthermore, the cost of a trademark protection will increase if smaller companies are forced to protect their trademarks nationally in a number of member states on account of the fact that it is uncertain whether their CTM will endure.
We regard a change of the existing practice as a threat under the current CTM System. Consequently, we have worked in International forums at maintaining the existing practice according to which genuine use in one member state is sufficient to document use of a CTM. Of course there is a risk that the CTM register will be filled with trademarks that are only in use in few member states. However, a regulation hereof should be handled differently, e.g. by intensifying the existing practice concerning lists of goods and services.
The entire CTM system is under review by the European Commission this year. In this connection, the Max Planck Institute is carrying out surveys concerning use of a CTM among other things. It shall be interesting to learn if the users of the CTM system demand a clarification of the practice and in such case if that practice will be laid down in a new legislation instead of being left for interpretation by the Court of Justice of the EU. We will be following the progress and hope that the existing practice will be laid down legislatively.
In any case, we will encourage CTM owners to put their trademarks into genuine use in as many member states as possible – and to make sure to save all documentation of genuine use.
Anette Rasmussen, Attorney at Law and Line Wittendorff, Trademark Attorney, Awapatent
