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Use of a CTM in the Netherlands regarded as genuine use?

In an opposition procedure before the Benelux Office for Intellectual Property (BOIP) in January 2010, it was held that the use of a Community trademark (CTM) in the Netherlands only is not sufficient to conclude that the CTM has been genuinely used.

While there have not been any rulings in this specific respect, it was generally assumed that the use of a Community trademark in only one EU member state was sufficient in order to maintain the registration.

The owner of the Community trademark ONEL filed an opposition against the application of the mark OMEL. However, before assessing the risk of confusion between the marks, the opponent was required to establish that its mark had been genuinely used in the five years preceding the opposition procedure. The opponent stated that its mark had been used in the Netherlands only. The BOIP, thus, had to rule on the principle question whether use in the Netherlands was sufficient to keep a Community trademark registration alive.

Joint statements disregarded
As there is no answer to this principle question in the Community Trademark Regulation(Regulation) itself, the BOIP was forced to resort to the Joint Statements by the EU member states developed during the drafting of the Regulation. In the Joint Statements it was considered that use in one single member state suffices to maintain one”s Community trademark registration.

However, according to the BOIP, these Joint Statements are contrary to the general principle of the Regulation and, additionally, to the preamble of the Regulation, since “according to the BOIP” these would imply that the genuine use of a mark constitutes use in the entire EU. As a result, the BOIP ruled that the Community trademark of the opponent had not been genuinely used since the use in the Netherlands alone was not considered sufficient and, therefore, the opposition was ultimately rejected.

Far from final
This ruling could have serious consequences. After all, Community trademarks are often applied for by Benelux companies in order to be covered in the future in the case of business expansion outside of the Benelux. If genuine use outside of the Netherlands cannot be established, there is a risk that “even in the case of obvious confusing similarity” the opposition will be nonetheless rejected based on insufficient use of a Community trademark.

An important observation with respect to this decision, however, is that it originates from the BOIP, which is not a formal Court of law; thus, this specific subject is yet to be decided upon and crystallized in case law. The opponent has meanwhile filed an appeal against this decision which will serve before the Court of Appeal in The Hague.

In any event, the decision has surprised many trademark practitioners since “particularly based on the Joint Statements” it was generally assumed that use of a Community trademark in one EU member state was sufficient for being considered genuine use of the Community trademark. Soon after the decision, the Office for Harmonization of the Internal Market (OHIM) advised that, regardless of the decision by the BOIP, it shall maintain the general point of departure of the Joint Statements and consider use in one single country as sufficient. Ultimately, it is strongly questionable whether the Court of Appeal in The Hague will uphold the BOIP”s decision.

To be continued no doubt…