Answer could lie in the case law of the ECJ
Met dank aan Pieter Veeze, BBIE
UNION of European practitioners in intellectual property heeft zijn vijftigste verjaardag gevierd. Dit heuglijke feit is gevierd tijdens een congres te Brussel, waarbij Edmond Simon (Directeur-Generaal van het BBIE) tijdens de opening zijn felicitaties heeft overgebracht. Een van de sprekers op het programma was Pieter Veeze (jurist bij het BBIE), die een voordracht hield over normaal gebruik van gemeenschapsmerken (de ONEL zaak).
I will of course not be able to discuss the whole study in 20 minutes, so I decided to focus on one element, which is in my view of the utmost importance for the coexistence of the systems and, in the end, for the successful functioning of the European trademark system as a whole: genuine use. Or to be more precise, territorial aspects of genuine use. You will probably all have guessed by now that I will discuss the famous ONEL-case.
But before I continue, I must make a clear statement: I admit my name is Pieter Veeze. I also admit that I am employed by the Benelux Office for Intellectual Property. I even admit being rapporteur of the opposition decision in the matter of ONEL vs. OMEL1. However, I am here today as Pieter Veeze, the person, and not in my capacity of staff member of the Benelux Office. So anything I will say is attributable to myself and to me alone, and if my personal opinion happens to correspond with the opinion of my Office, this is no more than a coincidence.
ONEL: the facts
As I am sure everyone present here today knows, in the beginning of 2010, our Office issued an opposition decision which attracted quite a bit of attention: the ONEL case. I will very briefly summarize the facts, since I assume that they are not new for most of you.
An opposition was filed at our Office against the Benelux trademark OMEL for legal services, based on an earlier CTM for the mark ONEL, also for legal services. As you can see, both the marks and the services are similar or even identical. The earlier mark was registered as a CTM for more than five years, and the defendant demanded proof of use. He specifically added that he was aware of the use of the ONEL mark in the Netherlands – which is not surprising because ONEL is active in the IP consulting business for more than 40 years. Genuine use in the Netherlands was, therefore, in confesso between the parties, and the request for proof of use only concerned other EU countries. (...)ONEL: the arguments
As a true lawyer, I always read backwards, so I will start with the conclusion (points
37 and 38 of the decision). I have fully quoted them, since I have experienced that there is sometimes a misunderstanding about it:37. Taking everything into consideration, the Office is of the opinion that the view contained in the Joint Statements stating that genuine use in one single country by definition results in genuine use in the Community, cannot be maintained.
38. The invoked right is a CTM and parties have admitted that it has only been used in the Netherlands. The services for which the invoked right is registered are destined at a large public located throughout the entire Community. Use in only the Netherlands can, given these facts, not be classified as normal use of the invoked right.
As you can see, I have underlined the words “by definition”. Many people seem not to have read those words very carefully. Our decision does not state that use in one member state is by definition not enough. It simply states that it is not by definition enough. This is, of course, something quite different. (...)
ONEL: the discussion
The discussion about genuine use of a CTM is, of course, not entirely new8. But the ONEL decision really seemed to “boost it up”. Honestly speaking, we were a bit overwhelmed by the enormous amount of attention the decision generated, not only in the Benelux, not even only in the EU, but literally worldwide. (...)ONEL: arguments against the decision
The first argument I have heard from some critics is, so to say, “haven’t these morons at the Benelux Office read PAGO9?” Or in other words, if reputation in one country is already enough, genuine use in one country will certainly be sufficient. I am not convinced by this argument. Genuine use and reputation are totally different subjects, with a totally different ratio legis. Genuine use is about the existence of the right, and we know from cases like EUROPOLIS10 and BOUNTY11 that this is a question of all or nothing. Reputation can lead to a broader protection, and we already knew from the CHEVY12 case that this can very well be limited to a specific area or country. This is also how I interpret the recent DHL13 case. (...)Genuine use: predicting the future
I now come to the last and hopefully most exciting part of this presentation: I will use my crystal ball and try to predict the future.(...)But to be honest, I am not convinced that an “invented solution” is really necessary. Perhaps the answer is closer than we all think. In ANSUL, the ECJ considered:
“When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark.”
In my opinion, if one would take account of all these facts and circumstances, the answer would clearly be different for a market of 500 million people than for a market that has a fraction of that population. So basically, I think the answer could lie in the case law of the ECJ itself. If all the characteristics of the market concerned – whether they are geographic, economic, sociologic, demographic or whatever – are properly taken into account – which must of course happen on a case by case basis – I think we could be on the right way to solve the problem.
