Bonjour Mesdames, Messieurs,

establishing genuine use in the Benelux. As to the criteria the Court ruled that all the facts and
circumstances such as kind of use, territorial scope, frequency, regularity and duration of use,
the kind of product and the kind and dimension of the company have to be taken into account
in their mutual relations. It was therefore not necessary that the trademark be used throughout
the entire Benelux . But, ladies and gentlemen, you will understand immediately that we are
very far away from the Declaration of 1995 establishing use in one Member State as a
general principle! And why do I refer to this decision of our Benelux Court, which dates back
to 1981 – long before the Regulation came into force? The reason is that the CTM and our
own Benelux trademark have some similarities .We also have one single trademark with a
unitary character for the whole Benelux territory and this territory is composed of three
different countries of different sizes. The Benelux is made up of one large, one medium and
one very small country. No fewer than four official languages are spoken in addition to
various dialects. Moreover, the Benelux legislators created the Benelux trademark some fifty
years ago for one reason : to ensure the free movement of goods within the Benelux
Economic Union . It is a principle later adopted by the European Union and anchored in the
first Recitals of the Regulation.
But I admit that genuine use has now become Community law and that in the end it will be
up to the Court of Justice of the European Communities to have the last word!
I find the recent CJ judgement of 6 October 2009 in the PAGO case to be extremely
disappointing, while the conclusions of AG Sharpston regarding the Community territory as a
whole seemed totally convincing to me ! To go back to my little home country, Luxembourg,
if I am reading the judgement correctly, 0.05% may now be considered to constitute a
„substantial part‟ of the territory of the Community!! Surely this is a contradiction in terms!
But, Ladies and Gentlemen, all is not lost! The Commission has recently begun a study into
the operation of the CTM system as a whole. It will amongst other things examine the issue of
territorial use of the CTM (Evaluation question (2) Relation between CTM system and
national trade mark systems (ii) Requirement for a CTM to be used “in the Community”) . It
is my fervent hope that all those asked to respond to the questionnaire do so carefully and that
the outcome will be balanced and based on consideration of the trademark landscape shaped
on three different registration systems : national, European and international, and the
knowledge that these three systems complement each other, with each responding to different
needs .
I am definitely not ruling out the possibility that a case of my Office will soon be brought to
the Court of Justice with different prejudicial questions relating to Article 15, paragraph 1 of
the Regulation. It is about an opposition proceeding between a Dutch CTM holder and a
Benelux trademark holder. The CTM holder exercises his trademark only on Dutch territory
(they offer legal services to SMEs based in the Netherlands ) ; the Benelux trademark holder
does not exercise his trademark in the Benelux but he needs it in order to obtain an
international registration for Sweden , an EU Member State and signatory to the Madrid
Protocol, and for Norway , a non-EU Member State, but signatory to the Madrid Protocol.
The CTM holder is seeking to stop the Benelux trademark holder to get a trademark right in
an other EU Member State whereas there is no overlap between the two markets and at the
same time obstruct the Madrid Protocol route. According to me this is a case in point to
illustrate where the aberrant situation, caused by such a narrow interpretation of CTM
territorial use, can lead to.