Bonjour Mesdames, Messieurs,

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and I quote, was “to promote throughout the Community a harmonious development of economic activities and a continuous and balanced expansion by completing an internal market which functions properly and offers conditions which are similar to those obtaining in a national market.” Does it, and I quote, “open up unrestricted economic activity in the whole of the common market for the benefit of undertakings”, as laid down in the fourth recital of the Directive? 6- Our own legislation in the Benelux has been dealing with opposition proceedings only since 2004 and statistics show that Benelux applicants (mostly SMEs) are facing more and more proceedings based on a CTM ( 54.6% in the last thirteen months ) , although I want to point out once again that a CTM does not need ever to be used in the Benelux in order to be a valid registration. There are several reasons for the increase, but one could be that trade mark holders should be more alert in order to avoid falling into the trap of limitation in consequence of acquiescence, another principle of Community law (Directive, article 9). This percentage of oppositions based on a CTM is steadily and continuously increasing (by 15% up in less than two years) and there is no reason to believe that this increase will come to an end in the future. Every year, applicants for Benelux trademarks are effectively confronted with more than 100,000 new CTMs (either directly through OHIM or via the Madrid Protocol), whereas the “Benelux market” itself rarely exceeds 30,000 trademark registrations (and this includes international registrations with effect in the Benelux). 7- These constraints hardly encourage SMEs ,which are the very heart of the Lisbon Strategy, to file their trade mark applications on a national level, despite the fact that the Regulation starts from the principle that , and I quote, “national trade marks continue to be necessary for those undertakings which do not want protection of their trade marks at Community level”. To actually check the availability of their trade marks, SMEs must now search through three registers: the national/ Benelux register (with a requirement for use), the international register (with a requirement for use in the designated states) and above all in the Community register where tens of thousands of trade marks are registered every year and where the validity is not affected by nonuse, even over time in 26 Member-States of the Community. As I said in the case of my home country Luxembourg, it could mean up to 99.92% of the Community‟s population and 99.95% of the Community territory. This simply leads to a Lawyers’ Paradise where any balance between the three registration systems has vanished. This affects all proprietors of trademarks, whether they go down the national, international or community route. It is certainly not in the spirit of the so-called “Kok report” on the Lisbon Strategy in which a High Level Group recommended that the protection of intellectual property should be made more accessible to SMEs by reducing the costs. 8- This has been all the more true since the Community's accession to the Madrid Protocol in 2004, some nine years after the Declaration. This Protocol grants those Member States signatory to the Protocol easy access to the Common Market in order to assert their exclusive rights. The reverse, however, is not possible under the same conditions . Whereas businesses in China, the USA, Japan and the Russian Federation are able to use the CTM system to impose their own trade marks on Benelux companies without ever using them on Benelux territory, this is manifestly not the case for those Benelux businesses that wish to impose their rights on the same companies in their respective countries. They actually have to prove genuine use in
each of the States where they want to maintain their rights. On top of this and in view of future developments we cannot lose sight of the fact that several of these States, including China and the Russian Federation for example, show enormous economic potential probably resulting in a booming number of trade mark filings. China has already become number one in the world of trademark filings! The same economic potential can also be seen in Brazil and India which, as we all know, are preparing to sign the Madrid Protocol. 9- This all goes to show that the notion of use related to the borders of a single country,or even part of a single country, must be dropped as a general principle. It has no place in a Common Market characterised by the free movement of goods and services and an absence of economic barriers. A CTM is protected across the Community and there must be genuine and effective use to justify this protection of exclusive rights, in the same way that genuine and effective use is a requisite in national and international registration systems. This would be in line with the wish of the European legislator expressed in the second recital of the Regulation, mentioned above, regarding the operation of the internal market. Inspiration could be drawn from the CFI judgement in case no. T-39/01 dated 22 February 2003 . I quote from Consideration 37: „… this use implies that the trade mark is present on a substantial part of the territory in which it is protected through exercise of the essential function innate to it, in other words, to identify the commercial origin of the product or service in order to enable the consumer buying the product or service designated by the trade mark, to choose the same product or service in future or to buy another, depending on the experience etc etc…” To follow the CFI in this matter would ultimately bring us back to the version of Article 15 as proposed in the "Memorandum on the Creation of an EEC Trade mark" in 1976. This document referred clearly, and I quote “use in a substantial part of the common trade market”. Ladies and Gentlemen, I am fully aware that my presentation is more political than legal. The Regulation itself, apart from the Recitals I have just quoted, offers few legal arguments in support of wider territorial use. One exception is Article 112 paragraph 2 indent a. In my opinion this is the only Article in the entire Regulation which presents an implicit argument to contest the validity of the Declaration. This Article, according to some authors, could be interpreted a contrario in that sense that the CTM can be invalidated for not having been used according to Article 15 of the Regulation although the CTM was put to genuine use in one or more Member States. I share this interpretation because it is completely in line with the first Recitals of the Regulation as I understand them: the CTM was designed for companies with commercial activities on the level of the Community and not for companies without commercial activities on Community level. It is as simple as that! Article 112 does not make any sense if the validity of the Declaration was to be recognized! Now let us come back to the Benelux: local use or genuine use limited to one single Benelux country as a general principle is also hard to reconcile with a decision made by our own Benelux Court of Justice on 17 January 1981 in the well known Turmac/Reynolds case. The Court was asked by the Dutch Supreme Court which criteria should be taken into account for
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Bonjour Mesdames, Messieurs,

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