Bonjour Mesdames, Messieurs,

More documents

Recommendations

Info

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.
The huge general interest represented by the free movement of goods and services which lies at the very heart of the Single Market deserves very prompt clarification by the one and only authority competent to interpret the Regulation, namely the Court of Justice of the European Communities. Besides, it would not be the first time that the Court of Justice overruled the Declarations (see for example the decision of the Court of Justice of 7 July 2005 relating to „retail trade‟) and neither would it be the first time that the Court of Justice very quickly turned 180 degrees on their former jurisprudence (see for example the COMPANYLINE decision of 12 January 2000 compared to their BABY-DRY decision of 8 July 1999 ). So let‟s not lose hope and I trust you will rise to the challenge in the next few months. Of course I will keep Mr Ficsor informed about the progress of the proceeding. I am quite aware how much the Hungarian Patent Office cares about their SMEs as they play a more than vital role in our national economies. And I am absolutely certain that the same applies to Antonio in Portugal, his home country. Once again I would like to thank you so much for the privilege of being with you today and for listening to me so patiently. - END -
Page 1 and 2: T h e r e l a t i o n s h i p b e t
Page 3 and 4: document as the „Declaration‟ (
Page 5: each of the States where they want

Bonjour Mesdames, Messieurs,

You also want an ePaper? Increase the reach of your titles

Delete template?

Save as template?