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Thursday, 7 April 2011

But are there fairies at the bottom of my garden?

Like Sir Arthur Conan-Doyle, that great Scottish author who created Sherlock Holmes, the IPKat has long been fascinated by the question whether there are fairies in his garden.  He has been reported as having said that the presence of a single fairy in the bottom of his garden cannot be evidence of the existence of fairies in his garden as a whole.  This report has generated much debate both among the owners of neighbouring gardens and among those who have been appointed to rule on all issues relating to fairies.  The IPKat now wishes to affirm, conclusively and for the avoidance of all possible doubt, that he never said that the presence of a single fairy in the bottom of his garden cannot be evidence of the existence of fairies in his garden as a whole; all he said was that, as a matter of definition, the term "fairies in his garden" was not fulfilled by the presence of a single fairy at the bottom of his garden.

Bearing this in mind, the IPKat is delighted to host this piece from his friend and fellow IP enthusiast Tobias Cohen Jehoram, which is the approved English translation of a report of a part of a trade mark law conference that Tobias chaired on 25 March. Tobias explains:
"The Benelux Trademarks Office (BBIE) joined the discussions on its Onel decisions [on which see the IPKat here and in earlier links] and gave shared some interesting views. These are summarized in the article, the text of which has been approved by the BBIE, so that this can be considered the official line of the Bureau. Bottom line is that:
- the Onel decision has led to misunderstandings regarding the view of the BBIE
- the BBIE does NOT feel that use of a Cummunity trade mark in more than 1 EU member state is necessary in order to qualify as genuine use
- in fact use in The Netherlands alone can constitue genuine use of a Community trade mark (it just was not in the case which was presented to it)
- the BBIE will take an economic view when qualifying use of a Community trade mark".
Tobias's piece, which you can read in the original Dutch here, runs as follows:
Verba volant, scripta manent: words evaporate, but what's written remains

Not much is usually preserved of discussions at conventions and symposia, except impressions made on listeners. In the following contribution Tobias Cohen Jehoram, with the approval of the Benelux Office for Intellectual Property ("BOIP"), has memorialised points of view regarding a recent discussion about the Onel decision; an initiative which will, hopefully, be followed by others.

"The annual Kluwer Benelux Trade Mark Congress took place on Friday, 25 March last. During my introduction regarding the friction between Community trade mark law and Benelux trade mark law, a discussion arose about the Onel decision. Camille Janssen, who was also present along with Diter Wuytens, representing the BOIP, stated that the Onel decision has led to multiple misunderstandings. Diter stated that the view of the BOIP means that:

-           the BOIP did NOT decide that by definition use in one member state cannot qualify as normal use of a Community trade mark (but it did decide that this is not by definition sufficient),
-           in Onel, in view of the specific circumstances and in particular the services involved, use of the Community trade mark solely in the Netherlands was held to be insufficient,
-           national borders do not enter as a criterion in this repsect; the BOIP is not of the opinion that an international component is a requirement as such. However, when the use of the trade mark is limited to a small part of the EU (and a country such as the Netherlands qualifies as such, in the view of the BOIP) there is a small territory of use. In an assessment of genuine use, the size of the market for which the right is given plays a role,
-           it does not mean that use of a Community trade mark only in the Netherlands can never qualify as genuine use of the trade mark; the territory of use is just one of the factors which can play a role in answering that question,
-           all of this, in conformity with EU case law, depends on the market concerned, in particular the type of products and services, public involved, market share, geographical distribution, etc. In very specific cases (the example Camille mentioned was an airplane manufacturer only active in the Netherlands) where it concerns a market for a special product -of which not many are sold and the distributors and customers of which are highly specialised- use in a small part of the  territory of the EU can be sufficient.

I added to that statement that I presume that the services of a trade mark agent have an international character (covers a larger territory than the country of domicile) since it is standard practice that foreign companies / trade mark agents look for a trade mark agent in the Netherlands for a Benelux filing or trade mark. This situation differs from the facts as presented by the parties in Onel, which the BOIP thus cannot depart from. Also, I am of the opinion that, given the very low genuine use threshold as applied by the ECJ in La Mer and Ansul / Ajax, the requirement of an international aspect cannot be maintained, considering the judgment of the ECJ in, among others, Pago. According to that judgment Austria, with constitutes less than 2% of the Community (both in population and size) and with the half of the number of citizens of the Netherlands, can be qualified as 'a substantial part of the territory of the Community'. This means that genuine use in the Netherlands should (also) be qualified as genuine use in a substantial part of the Community and not as use in an irrelevant small territory. On top I noted that the geographical scope of the use is only one of the components which should be taken into account (ECJ Vitafruit) and an economic assessment should always be predominant. In that respect, I can find the BOIP on my side."

Prof. Tobias Cohen Jehoram, De Brauw Blackstone Westbroek.
(text approved by the BOIP)
The IPKat says this is a tricky issue and there's only one thing for it: he'll have to hop on an easyJet this very day and visit his Wise Old Friend Professor Charles Gielen in Amsterdam, to ask him if all of this is true -- since it was Charles (a bit more wrinkled than Tobias, but definitely not evaporated -- even if he does have a dry sense of humour) if this is all true.  After all, it was Charles who broke the news of ONEL to the English-speaking world back in January 2010.  Merpel says, what about those fairies ...?

The fringes of reality
Sir Arthur Conan-Doyle and fairies here
JK Rowling and wizards here
Sir Walter Scott and ghosts here
Robert Burns and elves here
Court of Justice of the European Union here

2 comments:

Anonymous said...

Well this is all strikingly different from what the Benelux Office said at the time. And they were followed enthusiastically by the Hungarian Office. There were Press Releases all round. I wonder what has made them change their tune?

Kingsley Egbuonu said...

What a swift contradiction or so to speak, 'nice attempt'. It may be the case that the BOIP has lost the support of others (except one).

Wearing the regional IP registry hat, the ONEL decision seemed to me like a quasi-political stunt that did not pull off; regardless, it shook the core foundation/essence of the CTM/single market including the boots of the policy makers.

Other necessary steps maybe taken to address the perceived unfair advantage of the CTM over national marks, but that should not include an assessment on use in more than one member state.


However, if this is now the repentance or possible redemption, everyone (especially anxious CTM proprietors) deserve a clear official statement since the ONEL decision created a wide-reaching unrest throughout the EU & possibly beyond.

Either they've not read their own decision properly before trying to convince us or they just wouldn't follow the CJEU guidelines.


I hope the EU trade mark Study addressing 'genuine' use would now assist, though I don't see anything substantially different from the jurisprudence available to the BOIP as of Jan 2010.

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