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Telling off, from Daily MailA dispute has been brewing for a few months now over the issue of “genuine use” of a European Community Trade Mark (“CTM”) for the purposes of opposing a CTM application.  The Beneleux Office for Intellectual Property ruled in OMEL/ONEL that use of a CTM in only one EC member state was not “genuine use” of a trade mark, and as such the mark could not be relied upon in opposition proceedings.  You can read more from the IPKat here.

The decision has caused quite a stir and there are many issues at play, including whether member states can divide the Internal (Single) Market in this way and whether the decision was based on self-interest:  if a business owner can protect his trade mark throughout the entire Community for around the same price as protecting it only in Belguim, the Netherlands and Luxemburg, you can guess who’s not going to be making as much money as they used to.

Various European officials have condemned the decision, and have said they are “confident” that it will be overturned on appeal (the threat of the Commission commencing proceedings against the member states involved may have provided some of that confidence).  The decision has also been described as “naked self-interest”, “absolutely unacceptable”, “a fundamental attack on the basic principle of the internal market that there should be no discrimination of any kind on companies, wherever they operate in a single uniform unitary market”, “fundamentally against the principles of the European Union” and a result of “somewhat protectionist temptations”, as well as a threat to SMEs.  Read more from the IPKat here.

The debate has also led to some interesting comments from non-EU pratitioners on what would be a good way forward.

One of them (here) is from Dan Bereskin, partner in the esteemed trade mark practice of Bereskin Parr.  His view is that the issue:

“is [the] geographical extent to which a CTM should be enforceable after five years, and the ability of the original CTM proprietor to block registration of similar signs for use in regions where the prior CTM has neither been used nor made known…Personally, I’d still like to see a requirement for use in commerce between at least two EU states after five years, but that issue seems less important to me than the issue of concurrent use/registrability.”

These are interesting comments, although I’m not sure how well the “made known” requirement would translate from the application side of the Canadian trade mark system to the renewal side of the European system, since a mark is constructively made known to the entire EC as soon as it is placed on the register.  (Though cf. http://www.nic.uk/digitalAssets/7986_aqualutionltd2.pdf, where the ADR Panel of Nominet, the .uk domain name registry, held (para 6.25) that “constructive notice” does not and should not apply to the Nominet DRS.  This wasn’t appealed, so is of only limited precedential value.)

I’m sure there are many who would not disagree with the suggestion that some degree of inter-state trade be required in order to sustain a CTM registration.  However, since that requirement is a long-standing feature of US federal registrations, I can only imagine that the absence of any similar requirement from the CTM Regulation is intentional.

Does anyone know if a Canadian mark would have its protection restricted if it was only used in, say PEI?  PEI is Canada’s smallest province (0.43% of total population), and its population is almost exactly one third of Malta (which has 0.09% of the EU’s population), so it could be an interesting case study.

Thoughts appreciated…

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