Wednesday, 19 December 2012

Use of TM in one Member State might be enough - but not necessarily

The long-awaited decision in the Onel case,  Case C-149/11, was handed down today by the Court of Justice (note: not "the Court of Justice of the European Union", which is the collective name for the two-tier judicial organ of the Union, and even more not the "European Court of Justice") and contains no great surprises. The judges have slightly diluted the Advocate General's opinion, that's all: and the decision acknowledges that use of a Community trade mark (note: not a Union trade mark - does anyone know why?) in a single Member State will count as "use in the European Union", as required by the Community trade mark regulation.

Of course, it is not the job of the Court of Justice to decide anything remotely factual, so it is limited to telling us what might be, whereas we might like to know what actually is. Is the ruling a sound communitaire one? It certainly looks like it at first sight. But I think it fails any useful test of such soundness. Bear with me ...

If the only way to protect a trade mark were to register it in the Community system, it would be absurd to say that it had to be used in (say) more than a single Member State (even dafter to insist it were used in all of them, of course). But that isn't the way things work. You can get protection in a single Member State if that's what you want, or need - or in two, or three, and so on. Of course, at about that point a Community trade mark becomes better value, but the cost is not the important thing here. To my mind, a Community trade mark, to be worthy of the name, must be used (or the proprietor must intend to use it) throughout the European Union: and if the proprietor intends to use only in a few countries, it should get national trade marks in those countries. It's not like a trade mark used only in Scotland, for example: there, the owner can't get protection in the territory of interest to it without also getting the rest of the UK (pending a referendum on Scottish independence, of course).

Any other approach simply causes dreadful, anticompetitive and chilling cluttering, and in a rational system should be prevented at all costs. It also seems to me to offend the basic principles of federalism - which may be irrelevant, given that the EU is not a federation - but this approach does not take us any closer to being one, and anyway principles of federalism can still inform aspects of the development of the Union.


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