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The apparently simple concept of use provides some of the most complicated questions in European trademark law. These have centered on what constitutes genuine use of a registered mark, and how much use in the Community is required to sustain a CTM. At a workshop tomorrow, panelists will discuss the law as it affects CTMs and national marks in each of the 27 EU member states, and will address specific questions as they arise from a hypothetical trademark registration. While the law as written is clear enough and the ECJ has handed down a few decisions on the question of use, the growth of the EU over the past decade raises new questions that require further elucidation from the courts. Tomorrow’s workshop WT02 on Genuine Use Requirements in the EU will highlight some of these questions.

Use—one short word that has caused no end of problems for trademark practitioners. Questions about intent-to-use, proving actual use and what even qualifies as use have plagued trademark owners worldwide. In Europe, a vigorous debate is now taking place over what constitutes genuine use of a Community trade mark and in particular whether the European rules on the minimum use required to sustain a mark are appropriate for a market that consists of 27 member states. A workshop tomorrow will consider these issues, and how they are being addressed in each member state, with some practical examples to illustrate the questions that trademark practitioners face.

The use question in the EU

Unlike the USPTO and certain other national trademark offices, OHIM—the office that registers and administers Community trade marks—is not required to address the question of use directly. There is no intent-to-use requirement for CTM applicants, and the Office cannot cancel marks for non-use on its own initiative.

However, Article 15 of the CTM Regulation provides that owners must put their CTMs to “genuine use in the Community” (see text below) within five years of registration. Article 50, which spells out the grounds for revocation of a CTM, provides for a third party to apply for marks to be canceled if they have not been used in this time. Today, 12 years after the launch of the CTM, hundreds of thousands of marks have been registered for at least five years and the prospect of more being attacked on the grounds of non-use is increasing.

Tomorrow’s workshop will see moderator Jean Pire of Gevers play the role of a candid client, who has a brand—a stylized cat design—that he wishes to protect in the EU. The cat is used in different colors and sometimes in association with the word LAVENDER. The client has two lines of business: fruit juice and nuclear plants. The hypothetical mark was registered nine years ago, and there are corresponding marks in the Benelux and UK.

The other panelists will answer some of the questions he has about genuine use, such as: As the mark is used in two different lines of business, does he have to show use in each one? If products were sold to a wholesaler, but never put on the market to end consumers, does this constitute use? What kind of evidence is necessary to show use and how should it be presented? How far can the mark as used diverge from what is registered? Is partial use enough? And what are acceptable reasons for non-use?

As well as addressing the questions regarding the CTM, the panelists will look at how the EU Trade Mark Directive has been interpreted by courts in all of the 27 EU member states. While EU trademark law is harmonized, says Olof Fickert of Herrero (one of today’s panelists), “many differences exist in national laws.” For example, he says: “Not all countries request use of a trademark as such—they might accept slightly modified use of a sign.” In addition, countries differ over whether use as a company name constitutes use as a trademark. The panelists will look at examples from different member states of cases where the courts found that there was enough use, as well as cases where the opposite was found.

An additional problem, which they will address today, is the dearth of case law in some countries. Says panelist Claes Agnvall of Zacco: “Many countries do not have much recent practice. I will be looking at Denmark, Estonia, Finland and Sweden. In Estonia I think there is only one case but in Denmark these issues are well reflected.”

The Maltese question

Article 15 raises another issue that increasingly troubles some trademark practitioners, namely what constitutes the Community and how extensive does the use need to be? When the Community trade mark was initially envisaged, the EU had 12 member states. Today, it has 27 including a number of countries with small populations such as Malta, Luxembourg, Cyprus and Estonia. It might grow further, with countries such as Turkey, Croatia, Macedonia and other successor states of Yugoslavia interested in joining.

So the question is essentially: is use in just one EU member state sufficient to maintain a CTM if challenged for non-use? In other words, can I use my mark just in Malta (population 600,000) and thereby block other parties from using that mark for the same goods anywhere in the EU (population 500 million)? While the Regulation does not specifically answer this, at the time it was drafted the European Council and Commission said that the answer is yes: one country is enough, provided the use is “genuine.” And that is the practice followed by OHIM today. That may have made sense at the time, but many practitioners fear the rule is becoming outdated as the EU grows and the number of CTMs registered increases. In particular, some argue that national rights rather than CTMs should be used where the applicant only intends to use the mark in one market. The test for use of a CTM, they argue, should be based on a proportion of the market covered, or a number of countries.

So far, the European Court of Justice has not been asked to rule on what is the minimum requirement for use in the Community, though at least two cases have provided guidance on what constitutes genuine use (see box). Unless, therefore, the Regulation is changed or pertinent questions are referred to the ECJ and it clarifies the law, the position remains that genuine use in one country is enough. Says Agnvall: “What we need is further practice. We need more guiding decisions from the ECJ.” Tomorrow’s interactive workshop will help explain the law on use as it exists today and how it can be applied to particular cases, but that simple three-letter word is set to generate controversy for many years yet.

ECJ cases on use

Ansul v Ajax (November 3, 2003—referred from The Netherlands, case C-40/01)

In a dispute over the alleged non-use of the mark Minimax, the Court said that the EU Trade Mark Directive “must be interpreted as meaning that there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; ... When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of the goods or services at issue, the characteristics of the market and the scale and frequency of use of the mark.”

La Mer Technology v Laboratoires Goemar (January 27, 2004—referred from UK, case C-259/02)

In a dispute essentially over whether sales to a wholesaler that did not reach the public constitute use, the Court echoed the answer given in Ansul, and added: “When it serves a real commercial purpose, in the circumstances cited above, even minimal use of the mark or use by only a single importer in the Member State concerned can be sufficient to establish genuine use within the meaning of the Directive.”

Armin Haupl v Lidl Stiftung & Co (June 14, 2007—referred from Austria, case C-246/05)

Answering a question regarding when the period of use of an international mark has to start, the Court said: “The ‘date of the completion of the registration procedure’ ... must be determined in each Member State in accordance with the procedural rules on registration in force in that State.” In response to a question regarding allowable reasons for non-use, it said the Directive “must be interpreted as meaning that obstacles having a direct relationship with a trade mark which make its use impossible or unreasonable and which are independent of the will of the proprietor of that mark constitute ‘proper reasons for non-use’ of the mark.”

Extracts from the CTM Regulation

Article 15

Use of Community trade marks

1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.

2. The following shall also constitute use within the meaning of paragraph 1:

(a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;

(b) affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes.

3. Use of the Community trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor.

Article 50

Grounds for revocation

1. The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:

(a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; ...