SHOULD THE GENUINE USE STANDARD BE CHANGED?

The IPKat read about OHIM Director of Trade Mark and Design Administration Vincent O’Reilly’s desire to rethink the meaning of “genuine use” for trade mark revocation purposes in MIP’s rather lovely free weekly news service.

Mr O’Reilly reckons that the correct standard to avoid revocation should be genuine use in any market, rather than in a substantial part of the EU defined geographically. He reasons that this will be more in tune with economic reality than the geographical view.

The IPKat first heard Mr O’Reilly espouse this view in this summer’s ECTA Conference. He doesn’t really see what difference a new definition would make, though. If you’re using your mark in any one market, then surely you must be using your mark in a geographical area at the same time, particularly since in seems that use in any one Member State will be sufficient to avoid revocation? Granted, use of the internet isn’t strictly limited geographically, but you still must be marketing to, or be having your goods purchased by, consumers in a particular jurisdiction. Perhaps the only situation in which the two approaches would lead to different results would be if a mark owner has made many small-scale uses of his mark in a single product-market in various member states that, individually don’t amount to genuine use in any one Member State. The Kat reckons though that this doesn’t happen too often, particularly since OHIM has shown itself willing to adjust the extent of use needed in the light of the nature of the market for the goods in question (see Sunday’s blog on the SULTANA decision).