Onel v Omel - 'one is none'

16/03/10

If you own a European Community Trade Mark (CTM) then you may be interested to read about a recent ruling by the Benelux Office for Intellectual Property (BOIP). This case is considered controversial since, although there remains uncertainty as to the finality of the Decision, it challenges one of the basic principles of the CTM system, namely that a trade mark owner can obtain and maintain an EU-wide monopoly even if the mark is used only in one EU member state.

The case concerns an opposition filed by the owner of a CTM registration for the mark ONEL in the Benelux against an application for a similar trade mark, OMEL. A CTM registration is a single, unitary right granting the owner a monopoly in the use of a particular trade mark for specified goods and services, across the entire territory of the European Union. The owner of a CTM registration therefore has the right to oppose later applications for similar marks, both at an EU-wide level, and before the national trade mark offices of the individual member states.

However, once a CTM has been registered for a period of five years, the owner must show that the mark has been put to genuine use in the European Union, in order to maintain the validity of the registration and so to be able to rely on the registration as a basis for opposition. To date, "genuine use in the European Union" has been taken to mean use anywhere in the EU; that is to say, use of a trade mark in one member state has been considered sufficient to support the validity of an EU-wide monopoly.

In the ONEL/OMEL case, the BOIP has taken what is in the view of many a fairly radical departure from the generally accepted current position, and ruled that use of a CTM in one Member State is not sufficient to meet the requirement of genuine use in the European Union, and so does not support the validity of the EU-wide monopoly. Rather, the BOIP considers that use of the mark must be proved in two or more member states to justify the monopoly. Note that, for the purposes of trade mark law, the Benelux region (Belgium, the Netherlands and Luxembourg) is considered to be a single member state. The justification behind the ruling is that the BOIP considers it would be unfair if a company active only in one locale could hamper another that is active in a different locale, where there is no actual confusion on the part of the public.

It should be noted that, although the trade mark laws of the EU member states are in principle harmonised, the Decision of the BOIP is not binding on the trade mark registries or national courts of other EU states, nor on the European Community Trade Mark Office (OHIM). The ONEL/OMEL case may therefore prove to have effect only in the Benelux. Furthermore, it is likely the case may be appealed in which case the judgement could be overturned and/or its rulings on trade mark use set aside.

For advice on how the Decision might impact on your business, contact Sanderson & Co. on 01206 571187

 

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