According to the Benelux Office for Intellectual Property, the use of a Community trade mark in only one Member State does no…

The opposition proceedings ONEL - OMEL (No.2004448), filed before the Benelux Office for Intellectual Property (hereinafter “BOIP”) should have passed unnoticed and should have been accepted without any difficulty as the marks at stake were visually and orally similar and the services, for which these marks were registered, were identical (moreover, this is what appears from the wording of the opposition decision and is not refuted by the defendant).

However, the defendant wishing to register the mark OMEL contested the validity of the trade mark invoked by the opponent, the Community trade mark ONEL and requested proof of use of the latter in Europe (except in the Netherlands where he was aware of the use of the ONEL trade mark).

The opponent, owner of the Community trade mark ONEL, considering that on the basis of the Joint Statement of the Council and the Commission on the Community Trade Mark Regulation (EC) No. 40/94 of 30 December 1993 (now Regulation (EC) No. 207/2009 of the Council of 26 February 2009 and hereinafter the “Regulation”) and on the basis of the opposition guidelines of the Office of Harmonization for the Internal Market (hereinafter “OAMI”) the use of a trade mark in one country, for instance the Netherlands, is sufficient to meet the requirement of use as defined in article 15 of the Regulation, decided to not provide proof of use in the other European countries.

The defendant stated that he totally disagreed with the interpretation that use in one single country would be sufficient stressing that article 15 of the Regulation referred to a use « in the Community » and not “in one of the Community Member States”. Such interpretation would in that case block the entire European market with a mark that was only used in a very small part thereof. It would create a monopoly.

It was up to BOIP to decide whether the use of the Community trade mark ONEL only in the Netherlands was indeed sufficient to consider that the opponent made a genuine use of its invoked trade mark during the previous five years : in the event, the opponent cannot prove such genuine use the BOIP has to reject the opposition . Even if the BOIP is not obliged to follow the OAMI policy, we could have expected that it would do so and would thus validate the interpretation of the opponent. However, the opposite happened.

Indeed, the BOIP considered on the one hand that a Joint Statement is not legally binding and on the other hand that the position taken in the Joint Statement is legally disputable since it is at odds with several articles of the Regulation which refer to a use in the entire Community.

The BOIP carried its analysis so far to conclude that the opponent has not provided sufficient proof of use of its invoked trade mark and refused the opposition by decision rendered on 15 January 2010 (see http://www.boip.int/en/news_display.php?news_id=98). An appeal has been lodged before the Court of Appeal of The Hague (the Netherlands). This Court will most probably seek a preliminary ruling from the European Court of Justice (ECJ) for the interpretation of article 15 of the Regulation to know whether the use of a Community trade mark could be considered as genuine if it is only used in one country of the Community.

Such a ruling of the ECJ will be of undeniable importance since it will pronounce on the unitary character of the Community trade mark and the necessary balance between the system of the Community trade mark and the national systems.

The position of the BOIP, defended also by the Hungarian Office, is quite surprising on the basis of the circumstances of the case but also on the basis of the position adopted previously in the Benelux where the use of a trade mark in one country or even a part of it was sufficient to prove the use.

Several voices have already been raised against such decision, including that of the OAMI.

This issue is widely debated in the context of the study into the European trade mark system launched by the Commission and it is not excluded that we see regulatory intervention before the Courts have taken a final decision on this matter.

We will keep you posted on any further developments in this case in one of our next E-Zines.