Is the use of a Community trademark in more than one Member State necessary to consider that there is genuine use?
A community trademark registration offers many advantages in comparison with a national registration, especially if we consider that, in the case of community trademarks, with only one application we can obtain trademark protection in 28 countries at once, avoiding having to apply one by one at every national office.
However, after the decision rendered the past 29th of June by the High Court of Justice of the United Kingdom in the case “Sofa Workshop Ltd v. Sofaworks Ltd”, [2015] EWHC 1773 (IPEC), it is more necessary than ever to contemplate, before opting for a community trademark registration, if we really intend to use our sign in more than one European Union country or not, for the referred Court has considered that the use only in one Member State doesn’t constitute per se genuine use in the European Union.
The facts of the case are the following:
The claimant (Sofa Workshop Ltd, from now on referred to as Sofa Workshop) is a retailer of sofas and other furniture, and owner of two word Community Trademarks (SOFA WORKSHOP) registered for different goods and services in relation to furniture and other similar articles.
The defendant (Sofaworks Ltd, from now on referred to as Sofaworks) is in the same business.
Sofa workshop files against Sofaworks an action for infringement of its two community trademarks, as well as a passing off action.
In its response to the claim, Sofaworks demands (i) the declaration of invalidity of both Community Trademarks of the claimant pursuant to articles 7 (1) (b) and (c) of the Community Trademark Regulation (EC) No 207/2009 (from now on CTMR) for lacking of distinctive character and for being descriptive, and in any case, (ii) the revocation of the said Community Trademarks for non-use pursuant to article 51 of the CTMR.
As to the revocation for non-use of the claimant’s Community Trademarks, Judge Hacon, interpreting the answers given by the Court of Justice of the European Union in its Judgement of 19 December 2012, C-149/11, “Leno Merken BV v Hagelkruis Beheer BV”, establishes the following:
- Firstly, the Judge understands that, in respect to Community trademarks the geographical extent of use is, in the general run, crucial: it must extent at least beyond the boundaries of one Member State. This does not apply where the market for the goods or services is confined to one Member State.
- As a consequence, in order to maintain a Community mark, some evidence should be required that the mark has been used to create or maintain a share in the market for the relevant goods or services across a section of the EU extending beyond one Member State.
This interpretation, which seems to clash with the statement given by the CJEU in the referred case “Leno Merken”, when the Court determined that “The question of whether there has been ‘genuine use in the Community’ is not to be approached from the perspective of whether there has been use of the mark in more than one, two or any other particular number of Member States. Territorial borders are to be disregarded.”
However, the English Judge Hacon continues saying in his decision that, in fact, the logic of disregarding territorial borders suggests that it may in some circumstances be necessary to have used the mark in more than two Member States, depending on the size of the market for the relevant goods or services in the States concerned when compared to the market in the Community as a whole.
Without any doubt, if this interpretation of the CJEU’s judgment in the case “Leno Merken” is followed in the future by other national courts becoming a rule of general application, this would give more certainty to trademark owners as to what it must be understood by ‘genuine use in the community’. However, at the same time, it can be dangerous to apply such a rule systematically, since the geographical extension of the use of the trademark is only one more fact to consider in order to determine the existence or not of ‘genuine use’. Other relevant circumstances to take into account in this sense are, for example, the characteristics of the market concerned, the nature of the relevant goods and services and the frequency and regularity of use.
Related Posts:
- Jugdement of the General Court on “3D eXam”: the extension of protection of international trademarks
- CJEU Decision in “Genesis”, a good example of the relevance of the autonomous interpretation of the CTM Regulation
- Analysis of the Spanish Supreme Court’s Judgment of 2 September 2015, “Gullon” (II): Application of the European Case Law on the Genuine Use of Trade Marks
- According to the CJEU, The period of 5 years following registration constitutes a grace period for the trademark holder