But are there fairies at the bottom of my garden?

Like Sir Arthur Conan-Doyle, that great Scottish author who created Sherlock Holmes, tytoc collie has long been fascinated by the question whether there are fairies in his garden.  He has been reported as having said that the presence of a single fairy in the bottom of his garden cannot be evidence of the existence of fairies in his garden as a whole.  This report has generated much debate both among the owners of neighbouring gardens and among those who have been appointed to rule on all issues relating to fairies.  tytoc collie now wishes to affirm, conclusively and for the avoidance of all possible doubt, that he never said that the presence of a single fairy in the bottom of his garden cannot be evidence of the existence of fairies in his garden as a whole; all he said was that, as a matter of definition, the term "fairies in his garden" was not fulfilled by the presence of a single fairy at the bottom of his garden.

Bearing this in mind, tytoc collie is delighted to host this piece from his friend and fellow IP enthusiast Tobias Cohen Jehoram, which is the approved English translation of a report of a part of a trade mark law conference that Tobias chaired on 25 March. Tobias explains:

"The Benelux Trademarks Office (BBIE) joined the discussions on its Onel decisions [on which see tytoc collie here and in earlier links] and gave shared some interesting views. These are summarized in the article, the text of which has been approved by the BBIE, so that this can be considered the official line of the Bureau. Bottom line is that:
- the Onel decision has led to misunderstandings regarding the view of the BBIE
- the BBIE does NOT feel that use of a Cummunity trade mark in more than 1 EU member state is necessary in order to qualify as genuine use
- in fact use in The Netherlands alone can constitue genuine use of a Community trade mark (it just was not in the case which was presented to it)
- the BBIE will take an economic view when qualifying use of a Community trade mark".

Tobias's piece, which you can read in the original Dutch here, runs as follows:

Verba volant, scripta manent: words evaporate, but what's written remains

Not much is usually preserved of discussions at conventions and symposia, except impressions made on listeners. In the following contribution Tobias Cohen Jehoram, with the approval of the Benelux Office for Intellectual Property ("BOIP"), has memorialised points of view regarding a recent discussion about the Onel decision; an initiative which will, hopefully, be followed by others.

"The annual Kluwer Benelux Trade Mark Congress took place on Friday, 25 March last. During my introduction regarding the friction between Community trade mark law and Benelux trade mark law, a discussion arose about the Onel decision. Camille Janssen, who was also present along with Diter Wuytens, representing the BOIP, stated that the Onel decision has led to multiple misunderstandings. Diter stated that the view of the BOIP means that:

-           the BOIP did NOT decide that by definition use in one member state cannot qualify as normal use of a Community trade mark (but it did decide that this is not by definition sufficient),

-           in Onel, in view of the specific circumstances and in particular the services involved, use of the Community trade mark solely in the Netherlands was held to be insufficient,

-           national borders do not enter as a criterion in this repsect; the BOIP is not of the opinion that an international component is a requirement as such. However, when the use of the trade mark is limited to a small part of the EU (and a country such as the Netherlands qualifies as such, in the view of the BOIP) there is a small territory of use. In an assessment of genuine use, the size of the market for which the right is given plays a role,

-           it does not mean that use of a Community trade mark only in the Netherlands can never qualify as genuine use of the trade mark; the territory of use is just one of the factors which can play a role in answering that question,

-           all of this, in conformity with EU case law, depends on the market concerned, in particular the type of products and services, public involved, market share, geographical distribution, etc. In very specific cases (the example Camille mentioned was an airplane manufacturer only active in the Netherlands) where it concerns a market for a special product -of which not many are sold and the distributors and customers of which are highly specialised- use in a small part of the  territory of the EU can be sufficient.

I added to that statement that I presume that the services of a trade mark agent have an international character (covers a larger territory than the country of domicile) since it is standard practice that foreign companies / trade mark agents look for a trade mark agent in the Netherlands for a Benelux filing or trade mark. This situation differs from the facts as presented by the parties in Onel, which the BOIP thus cannot depart from. Also, I am of the opinion that, given the very low genuine use threshold as applied by the ECJ in La Mer and Ansul / Ajax, the requirement of an international aspect cannot be maintained, considering the judgment of the ECJ in, among others, Pago. According to that judgment Austria, with constitutes less than 2% of the Community (both in population and size) and with the half of the number of citizens of the Netherlands, can be qualified as 'a substantial part of the territory of the Community'. This means that genuine use in the Netherlands should (also) be qualified as genuine use in a substantial part of the Community and not as use in an irrelevant small territory. On top I noted that the geographical scope of the use is only one of the components which should be taken into account (ECJ Vitafruit) and an economic assessment should always be predominant. In that respect, I can find the BOIP on my side."

Prof. Tobias Cohen Jehoram, De Brauw Blackstone Westbroek.
(text approved by the BOIP)

tytoc collie says this is a tricky issue and there's only one thing for it: he'll have to hop on an easyJet this very day and visit his Wise Old Friend Professor Charles Gielen in Amsterdam, to ask him if all of this is true -- since it was Charles (a bit more wrinkled than Tobias, but definitely not evaporated -- even if he does have a dry sense of humour) if this is all true.  After all, it was Charles who broke the news of ONEL to the English-speaking world back in January 2010.  Merpel says, what about those fairies ...?

The fringes of reality
Sir Arthur Conan-Doyle and fairies here
JK Rowling and wizards here
Sir Walter Scott and ghosts here
Robert Burns and elves here
Court of Justice of the European Union here

ONEL edges closer to resolution as Hague Court pops the questions

Does use of a Community trade mark in just one of the 27 Member States count as "genuine use" of that trade mark and, if so, in what circumstances will it do so? This question is now a little bit nearer resolution than it was before.  Thank you, Camille Janssen (Benelux Office for Intellectual Property) for sending tytoc collie this handy, if admittedly unofficial, translation from the original Dutch of the final form of the wording of the questions referred last week by the Hof Den Haag to the Court of Justice of the European Union (ECJ) for a preliminary ruling in Case number: 200.057.983/01 (ONEL/OMEL, on which please refer to earlier IPKat posts here, here, here and here, among others):

"Questions referred for a preliminary ruling

18. ... the Court feels that it is necessary to refer the following questions to the Court of Justice of the European Union for a preliminary ruling:

1. Should Article 15(1) of Regulation (EC) no. 207/2009 on the Community Trade Mark be interpreted in such a manner that it is sufficient, in order to qualify as genuine use of a Community trade mark, for that trade mark to be used within the frontiers of a single Member State, provided that this use, if it concerned a national trade mark, would qualify as genuine use in that Member State (cf. Joint Statement no. 10 on Article 15 of Council Regulation (EC) no. 40/94 dated 20 December 1993 and the OHIM’s Opposition Guidelines)?

2. If Question 1 is to be answered in the negative, does such use of a Community trade mark within a single Member State as described above not in any instance qualify as genuine use in the Community as defined in Article 15(1) of Regulation (EC) no. 207/2009?

3. If use of a Community trade mark within a single Member State does not in any instance qualify as genuine use in the Community, to what requirements – in addition to other factors – should the territorial scope of the use of a Community trade mark be subject for purposes of determining genuine use in the Community?

4. Alternatively, should – in deviation from the assumption used above – Article 15 of the Council Regulation on the Community Trade Mark be interpreted in such a manner that determination of genuine use in the Community is made wholly independent from the frontiers of the Member States’ respective territories (and for example market shares (product/geographic markets) be taken as a point of reference)?

Decision

The Court:
- requests the Court of Justice of the European Union to rule on the questions set out in par. 18 on the interpretation of the Regulation and Directive specified above;
- defers all further judgment and suspends these proceedings until the Court of Justice
of the European Union has ruled on those questions.

This judgment was handed down by J.C. Fasseur-van Santen, A.D. Kiers-Becking and M.Y.
Bonneur, and was pronounced in open session on 1 February 2011, in the presence of the
court registrar".

Says Merpel, this is one ruling from the ECJ which will be of genuine use to trade mark owners and their professional representatives ...

"No comments", but plenty of comment: more on "genuine use" in Europe

Not just a European debate: even "outsiders"
from the old colonies are welcome to have their say

"No news is good news", according to the proverb, but "no comment" gives less ground for celebration.  tytoc collie's post yesterday, "A kick in the gulyás? Hungary, Benelux stewed by Europe's finest" (here) attracted just one posted comment, but his email has been bubbling with ideas, suggestions and opinions from readers, some of whom are reluctant to be identified with the position they have taken in case what they say is considered legally incorrect by others with whom they work or because they don't want to alienate respected persons and firms in which prominent trade mark lawyers have taken a line which strongly opposes their own.

One correspondent who bravely agrees to be named is the highly experienced and well respected Dan Bereskin (Bereskin & Parr, Toronto), a man whose reputation [unlike that of certain trade marks which have been invoked in recent oppositions based on earlier Community trade marks, says Merpel] extends a good deal beyond the national boundaries of the country in which he practises.  Dan writes as follows:

"For me, the issue boils down to whether, after five years, a CTM that is used only in Malta [explanation for non-EU folk -- a very small EU Member State] should entitle the proprietor, even in theory, to block the use and/or registration of a similar sign elsewhere in the EU where the Maltese sign has neither been used nor made known. Any formulaic approach for determining what constitutes "genuine use in the Community" seems unlikely to be successful. My view, innocent as it is of any real understanding of EU law, is that the geographical extent of use sufficient to justify the continuation of a CTM is not really the issue. It is 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.

If the CTMR were amended to allow for a concurrent CTM after five years restricted to geographical areas where the prior CTM has neither been used nor made known to a reasonable extent through advertising, publicity, etc., and if the prior CTM is not enforceable in regions where it has neither been used or made known (such that there would be no likelihood of confusion in fact), I think the question of whether use in one state is sufficient diminishes substantially in importance. 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".

Coincidentally, Australian-in-England solicitor and blogger Rebecca Dimaridis has posted the following suggestion on her weblog this morning:

"I am thinking along the following "compromise" position. If I was to start up a small business, and wanted a CTM, I would think the following genuine use requirements would be fair:

* within 5 years in at least 1 member state;
* within the next 5 years in at least I other member state.

So essentially requiring genuine use in a 2nd member states within the first 10 years. That way, I could get myself up & going in 1 member state within the first 5 years. But what I can't say with enough authority is just how difficult or long it would take to start up a business in another member state.Would a total of 10 years actually be enough? Would it be right to say that if I'm not ready to launch in the next member state after the first 5 years, I probably won't be ready to launch at all? Or would it be more reasonable to allow for say 8 or 10 years for the 2nd member state?"

tytoc collie suspects that we may be seeing more discussion along these lines.  It would be good to hear some comment, whether attributable or anonymised, from some brand owners themselves and not just from practitioners in private practice.

A kick in the gulyás? Hungary, Benelux stewed by Europe's finest

In the stew: Hungary and Benelux --
but has there been "genuine use" of the law?

Is the use of a Community trade mark -- which covers all 27 Member States of the European Union -- to be regarded as a "genuine use" if it takes place in just one of those countries? This question has raised a good deal of controversy in recent months (see earlier IPKat posts here and here, for example). Not everyone has heard, however, that this topic was discussed last week by the European Parliament. According to a little bird that roosts in the rafters of that organisation, the Benelux and Hungarian IP offices came under a bit of heat.

Michel Barnier (Commissioner for the Internal Market and Services) expressed the view that any new restriction the Community trade mark [ie restricting the concept of genuine use to use that transcended national borders] could have serious consequences for the fight against counterfeiting; it would damage SMEs and business start-ups in particular. For that reason he would like to confirm and reassure the Parliament that his services were following very closely the developments in the Member States involved.

"At this stage we are confident that the national jurisdictions will not confirm these decisions, which do not seem to us to conform with the unitary character of the Community trade mark and with the principles of the single market ... The Commission will not allow one of the important elements of the internal market to be unpicked. If we let this happen due to the somewhat protectionist temptations in this or that country, it will be the SMEs who will be the first victims. We are therefore determined to say ‘stop’ to these temptations".

In the event that the decisions are not overturned at a national level (which Michel was confident they would be), the Commission would consider starting infringement proceedings.

Malcolm Harbour (Chairman of the Committee on the Internal Market and Consumer Protection) described the actions of the Benelux and Hungarian offices as “naked self-interest”:

“I want to thank the Commissioner very much indeed [Hmm, says Merpel, I thought being Commissioner was a thankless task ...] for making it absolutely clear that the behaviour of the two trade mark offices concerned – in Benelux and in Hungary – is absolutely unacceptable".

I emphasise that very strongly, because this is clearly an attack on the fundamental principles of the internal market. The first thing my committee intends to do – and I will make sure it happens – is that, when the Minister for the Internal Market (and indeed the Hungarian Minister, from January onwards) comes to my committee, we will make sure that we ask this question and ask them to go directly to their trademark offices and say this is not acceptable.

Why is it not acceptable? Because it is 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. In this case it is even worse, because this proposal – or proposed actions, if they were to be upheld – actually discriminates against small enterprises as opposed to larger enterprises.

I cannot understand why it is that, after all the time that we have had the Office for Harmonisation in the Internal Market (the trade mark office) in operation, we suddenly find these two trade mark offices doing this [Shall we tell him?]. Perhaps it is because the cost of registering a European trade mark has come down, because they are operating it so efficiently.

Of course, these two trade mark offices, in trying to sustain these objections to allowing people to register trade marks, will be requiring the companies concerned to register in their own jurisdictions. This is naked self-interest on behalf of these organisations. It cannot be allowed to stand. It is fundamentally against the principles of the European Union and, by the way, it also undermines – as the Commissioner rightly says – a major priority for this Commission, which is innovation, getting new products into the market and making the internal market work better.”

tytoc collie is most impressed at these expressions of principle since it was ever his feeling that, whatever the merits of the Benelux/Hungarians' legal arguments -- and their arguments are not entirely devoid of merit -- the principle involved was too big for anyone to let the actual law stand in its way. In any event, it's good to see European Parliamentarians discussing anything to do with intellectual property, since it shows that (i) the subject really is on the agenda and (ii) they know it's there.  Merpel adds, some folk might unkindly comment that, while the European Parliament doesn't yet know much about IP, its expertise in "naked self-interest" is unrivalled ...

Hungarian goulash here and here