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Sunday, 31 January 2010

How genuine is OMEL/ONEL?

The IPKat has caught the distant sound of Dutch trade mark personalities discussing the recent and still controversial OMEL/ONEL case, in which use of a Community trade mark in just one of the 27 Member States was not considered to be genuine use of an earlier mark in Benelux opposition proceedings (see the IPKat here, here and here). What the Kat heard, from a little bird, runs like this:

"ONEL -- the opponent in the proceedings in question -- is believed to be related to another firm, Knijff (the two share the same address and PO Box number), and some folk have asked whether this may case may have been cleverly crafted in order to stir up debate and perhaps obtain an authoritative ruling on an issue which certainly needs clarification.

OMEL, the opposed trade mark application, was filed by Hagelkruis Beheer B.V., a holding/real estate company with no employees and just a single shareholder, his wife being the "acting" director. The company registered a Benelux mark without a trade mark attorney. That is not very odd by itself, but rather odd if you consider that this application was filed only in the Benelux in order to secure a basic registration in order to obtain through the Madrid system some registrations in Scandinavia. I have never heard of small, non-represented clients in the Benelux using the Madrid system. What's more, the arguments that Hagelkruis raised are "too good" to have come from a person who has not specialized in trade mark law ...".
The IPKat is prepared to keep an open mind, since the ways of both businesses and trade mark practitioners around Europe are bound to differ from country to country; what's more, any lay person who regularly reads this blog and Class 46 would soon be expected to obtain a good education in European trade mark law. Merpel's not so sure: she still wonders about the European Court of Justice references in Case C-283/01 Shield Mark and Case C-273/00 Sieckmann, where the principal actors were IP practitioners themselves. Nothing to wonder about, says the IPKat -- intellectual property attorneys are allowed to use trade marks too, and any system that leaves gaps in its legislative details deserves to have those gaps filled in. But even so, it would be good to know a bit more about the background of this dispute.

3 comments:

David said...

I don't know if that's true, but at any rate it wouldn't be the first time that said attorneys use the opposition procedure to their advantage (pretty cleverly I might add). See

http://www.boip.int/pdf/opposition/2000061.pdf

The decision is in Dutch but as you'll see on p.1 both applicant and opposing party are represented by the same attorney... The case in question was intended to establish that the "CAMPINA" trademark had to be regarded as a famous trademark in the Benelux, which the BOIP accepted.

Bas Kist said...

‘Merpel still wonders about the European Court of Justice references in Case C-283/01 Shield Mark and Case C-273/00 Sieckmann, where the principal actors were IP practitioners themselves’, the IPKat wrote yesterday.

Merpel, please stop wondering. I can confirm that the Shield Mark case definitely was a set up, a test case and we (Shield Mark) never made a secret of that. The defendant in this case was Joost Kist, who happens to be my retired father. So nothing secret.

I am also convinced the Onel case is a test-case, but nothing wrong with that, I should say. They have raised an interesting question, that still has to be answered. They were of course lucky the Benelux Office took this remarkable position.

Bas Kist
Partner Zacco, formerly Shieldmark

Anonymous said...

The chronology of the case suggests something even more remarkable. The Head of the Benelux Office seems to have been aware of the facts and likely outcome even before the parties had completed their submissions - see last paragraphs of his speech at a Hungarian conference on 3 November:
http://www.mszh.hu/English/RC/Simon_E_text.pdf

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