Sunday, 23 May 2010

Use of a trade mark

In a couple of weeks I have to give a talk on the subject of trade mark use - specifically, on the developing controversy about how extensive use of a trade mark must be within the European Union. But I have just come across this interesting posting on an Australian case, E.& J.Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 which tells us that the use that might keep a trade mark registration alive does not even have to be known to the trade mark owner - as where a parallel importer brings goods into the country and they are sold to consumers. On the one hand, I can see that it's consistent with the origin-indicating function of the trade mark: on the other, it's hard to conceive of it as use by the trade mark owner, and it does seem to be use by the trade mark owner (or with the trade mark owner's consent) that is required in Australian law.

Hat tip to Barry Eager and his Bazpat blawg, which I'll add to the blawgroll.

As for my subject for the talk, it seems to me of the essence of a Community trade mark that it should function at the Community level, and if a trade mark functions only at the national or regional level it is not right that commercial speech should be restricted in countries where the trade mark is unknown. I think it's a big difference between the US and the EU - indeed, between a federal system and the confederation that is the European Union. And if Community trade marks were intended to work even if they only meant anything to consumers in one country, why have parallel national trade mark registration systems at all?  The justification for a trade mark has always been the way that it reduces consumer search costs, but if the trade mark is completely unknown that justification is completely lacking.

Other people don't share this view!

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