CLASS 46
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MONDAY, 25 JANUARY 2010
Onel vs Omel: Not Normal - The BOIP's Decision in English Translation
A bit of 'shock and awe' might run trough the European Trade Mark Communities. The Benelux Office for Intellectual Property (BOIP) rules the waves (see my last Saturdays' post) by explicitly urging owners of CTM's to use their trade marks not only in one country, but throughout the EU. The saying in the Netherlands might be 'één is geen' (which could be freely translated as having one is the same as having none), but the question of course is, is that a valid approach in view of the Joint Statements in which it is held that use of a CTM in only one Member State can be sufficient to keep a CTM 'alive'. See for further first comments and discussion IPKat and Boek9. In the meantime a non-official English translation of the decision can be found here.
Posted by: Gino Van Roeyen @ 13.49
Tags: CTM, Benelux, Normal Use,
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Onel vs Omel: Not Normal - The BOIP's Decision in English Translation
Tags: CTM, Benelux, Normal Use,
Sharing on Social Media? Use the link below...Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA1648
Reader Comments: 1
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27 January 2010 @ 10.18
Hello: In my opinion, there are several criteria that must be taken into account in determining the sufficiency of use of a CTM within a single Member State, and are as follows: - First of all, and as the community judge has held: the territorial scope of the use is only one of several factors to be taken into account in the determination of whether it is genuine or not (see, to that effect, judgment of the Court of Justice of 11 May 2006 in Case C-416/04 P The Sunrider Corporation v OHIM (‘Vitafruit’) [2006] ECR I-4237, at paragraph 76, and judgment of the General Court of 10 September 2008 in Case T-325/06 Boston Scientific Ltd v OHIM (‘Capio’) [2008] ECR publication pending, at paragraph 46; see also to that effect and by analogy, order of the Court of Justice of 27 January 2004 in Case C-259/02 La Mer Technology, Inc. v Laboratoires Goemar SA (‘Laboratoire de la mer’) [2004] ECR I-1159, at paragraph 24). - Second: it is not possible to determine a priori, and in the abstract, what quantitative (and territorial?) threshold should be chosen in order to determine whether use is genuine or not. A ‘de minimis’ rule, which would not allow the national court to appraise all the circumstances of the dispute before it, cannot therefore be laid down (see to that effect, order of the Court of Justice of 27 January 2004 in Case C-259/02 La Mer Technology, Inc. v Laboratoires Goemar SA (‘Laboratoire de la mer’) [2004] ECR I-1159, at paragraph 25; and judgment of the Court of Justice of 11 May 2006 in Case C-416/04 P The Sunrider Corporation v OHIM (‘Vitafruit’) [2006] ECR I-4237, at paragraph 72). - Third, as the community judge has established: use of the mark may in some cases be sufficient to establish genuine use within the meaning of the Directive, even if that use is not quantitatively (territorially?) significant. Even (territorial?) minimal use can therefore be sufficient to qualify as genuine (see to that effect, order of the Court of Justice of 27 January 2004 in Case C-259/02 La Mer Technology, Inc. v Laboratoires Goemar SA (‘Laboratoire de la mer’) [2004] ECR I-1159, at paragraph 21; judgment of the Court of Justice of 11 March 2003 in Case C-40/01 Ansul BV v Ajax Brandbeveiliging BV (‘Minimax’) [2003] ECR I-2439, at paragraph 39; and judgment of the Court of Justice of 11 May 2006 in Case C-416/04 P The Sunrider Corporation v OHIM (‘Vitafruit’) [2006] ECR I-4237, at paragraph 72 in fine). - Fourth: as provided in Article 15(1)(b) of CTMR (207/2009), The following shall also constitute use within the meaning of the first subparagraph: […](b) affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes. In that sense, and as the community judge has held, use of the mark by a single client which imports the products for which the mark is registered can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor of the mark (see to that effect, order of the Court of Justice of 27 January 2004 in Case C-259/02 La Mer Technology, Inc. v Laboratoires Goemar SA (‘Laboratoire de la mer’) [2004] ECR I-1159, at paragraphs 24 and 27 in fine). In the light of all the above considerations, it should be noted that in many cases the use of a CTM in one single Member State could be considered as “sufficient” or “genuine”. Dr. Camilo Sessano Goenaga.
27 January 2010 @ 10.18
Hello: In my opinion, there are several criteria that must be taken into account in determining the sufficiency of use of a CTM within a single Member State, and are as follows: - First of all, and as the community judge has held: the territorial scope of the use is only one of several factors to be taken into account in the determination of whether it is genuine or not (see, to that effect, judgment of the Court of Justice of 11 May 2006 in Case C-416/04 P The Sunrider Corporation v OHIM (‘Vitafruit’) [2006] ECR I-4237, at paragraph 76, and judgment of the General Court of 10 September 2008 in Case T-325/06 Boston Scientific Ltd v OHIM (‘Capio’) [2008] ECR publication pending, at paragraph 46; see also to that effect and by analogy, order of the Court of Justice of 27 January 2004 in Case C-259/02 La Mer Technology, Inc. v Laboratoires Goemar SA (‘Laboratoire de la mer’) [2004] ECR I-1159, at paragraph 24). - Second: it is not possible to determine a priori, and in the abstract, what quantitative (and territorial?) threshold should be chosen in order to determine whether use is genuine or not. A ‘de minimis’ rule, which would not allow the national court to appraise all the circumstances of the dispute before it, cannot therefore be laid down (see to that effect, order of the Court of Justice of 27 January 2004 in Case C-259/02 La Mer Technology, Inc. v Laboratoires Goemar SA (‘Laboratoire de la mer’) [2004] ECR I-1159, at paragraph 25; and judgment of the Court of Justice of 11 May 2006 in Case C-416/04 P The Sunrider Corporation v OHIM (‘Vitafruit’) [2006] ECR I-4237, at paragraph 72). - Third, as the community judge has established: use of the mark may in some cases be sufficient to establish genuine use within the meaning of the Directive, even if that use is not quantitatively (territorially?) significant. Even (territorial?) minimal use can therefore be sufficient to qualify as genuine (see to that effect, order of the Court of Justice of 27 January 2004 in Case C-259/02 La Mer Technology, Inc. v Laboratoires Goemar SA (‘Laboratoire de la mer’) [2004] ECR I-1159, at paragraph 21; judgment of the Court of Justice of 11 March 2003 in Case C-40/01 Ansul BV v Ajax Brandbeveiliging BV (‘Minimax’) [2003] ECR I-2439, at paragraph 39; and judgment of the Court of Justice of 11 May 2006 in Case C-416/04 P The Sunrider Corporation v OHIM (‘Vitafruit’) [2006] ECR I-4237, at paragraph 72 in fine). - Fourth: as provided in Article 15(1)(b) of CTMR (207/2009), The following shall also constitute use within the meaning of the first subparagraph: […](b) affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes. In that sense, and as the community judge has held, use of the mark by a single client which imports the products for which the mark is registered can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor of the mark (see to that effect, order of the Court of Justice of 27 January 2004 in Case C-259/02 La Mer Technology, Inc. v Laboratoires Goemar SA (‘Laboratoire de la mer’) [2004] ECR I-1159, at paragraphs 24 and 27 in fine). In the light of all the above considerations, it should be noted that in many cases the use of a CTM in one single Member State could be considered as “sufficient” or “genuine”. Dr. Camilo Sessano Goenaga.
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