Onel / Omel: Preach for your own parish?
Prof. mr. Willem A. Hoyng, Howrey, Tilburg University: Annotated commentary on BOIP, 15 Januari 2010, Nº 20044489 (Onel / Omel, genuine use CTM).
Some quotes from the article: “This also evidences that the BOIP failed to appreciate the fundamental freedoms on which the European Union has been founded. The BOIP is of the opinion that the free movement of goods is adversely affected if an entrepreneur established in another country where the Community trademark is not being used would not be able to use this trademark. In the present case the free movement of goods is therefore, in the opinion of the BOIP, adversely affected owing to the fact that, by way of example, Les Mazes s.a.r.l., established in Gaillac, France, cannot make use of the trademark ONEL. However, there is actually question of the contrary! After all, it is actually this kind of registration by this kind of entrepreneur that leads to distortion of the free movement of goods. After all, in the present case this implies that the goods and services of ONEL can no longer freely circulate in the EU (after all, in my example Les Mazes s.a.r.l. will object to the supply of services under the ONEL trademark in France) and the same applies to the products and services in my example of Les Mazes s.a.r.l. which products and services cannot be sold in the Benelux.
As indicated, the decision of the BOIP is also at odds with the case-law of the Court of Justice. In the Pago decision the holder of the European trademark for Pago exclusively used its trademark in Austria and the trademark was well known there. The Court of Justice ruled that the reputation (the consequence of intensive use) in Austria is sufficient to assume that there is question of a known Community trademark. It is then completely in line with this to assume that genuine use in a Member State is sufficient to assume genuine use within the EU. (Read more)
It is clear that as a result of this decision the Court of Justice underlined the importance of considering the EU as, as it were, one state upon the application of European Trademark Law.
(…) Ideally, ultimately the possibility of the national registration should fully be abolished. In this context it would be a good thing to offer entrepreneurs who express the intention to only use a trademark in one Member State a reduced fee for registration of a Community trademark. If the entrepreneur later yet wants to offer the goods or services elsewhere he should then pay. To put it briefly, when it comes to preaching for your own parish (which, as said, I do not assume) this certainly was unnecessary!”
Read the full article here.
