Genuine use of the Community trademark and interpretation discrepancies
On January 15, 2010, the Benelux Office for Intellectual Property (BOIP) made a surprising decision concerning the interpretation of the unchanging definition of the genuine use of a Community trademark. Indeed, even though it had long been understood as being valid provided that such use is made in at least one of the European Union’s Member States (see Article 15 of the Community Trademark Regulation and the Joint Statements by the Council and European Commission), the BOIP considered that such interpretation was erroneous.
On the occasion of the ONEL vs. OMEL opposition proceedings, the Joint Statements were declared not legally binding, so that the trademark competent courts could be free to apply their own standards. It was then argued that giving Community trademark owners the opportunity to prove use of their signs in only one of the Member States would mean blocking the whole Community market and preventing third parties from using a mark in another country, where the initial owner obviously had no right and no specific interest. The BOIP also stated that the usual definition of the genuine use for a Community trademark appeared to be in contradiction with other laws (such as the Preamble to the Community Trademark Regulation), for it implied an obstacle to freedom of movement of goods and of providing services within the Internal Market.
It seems that the BOIP showed rashness in its taking of position in the “genuine use” issue, since refusing to apply Community case law - although it shall be bound by it - is a risk of being sanctioned by the competent Community authorities. Besides, if applied to Benelux trademarks, its reasoning is likely to challenge the scope of protection of these signs which will soon be under obligation of use and which might not be used in the three countries at stake (Belgium, the Netherlands and Luxembourg). In its own interest and in that of Community and Benelux trademark owners, it shall be hoped that the BOIP will notice the apparent contradiction between its ruling and some Community cases (Ansul-Ajax, La Mer-Goemar, Chevy, Pago-Tirolmilch, among others) to overrule this odd decision of January 15, 2010.
By Caroline Guérin