Article 8(4) of the CTM Regulation tells us that relative grounds for refusal of registration of a Community trade mark may exist where a senior user has common law or similar rights. Those rights, however, must be "of more than mere local significance". Only the European Community could have come up with such a vague expression, and used it in legislation. What is it supposed to mean?
In Case T-318/06 to T-321/06, Alberto Jorge Moreira da Fonsecal OHIM - General Optica, the General Court thought that an assessment of this condition required a consideration of not only the geographical dimension but also the economical dimension of the sign's significance, in the light of how long the sign has fulfilled its function in the course of trade and the degree to which it has been used.
Case T-430/08 Grain Millers, Inc. v Office for Harmonisation in the Internal Market involved opposition proceedings between Grain Millers GmbH & Co. KG and Grain Millers, Inc. The opposition succeeded, and the General Court rejected Inc’s appeal. Arguing that the General Court failed to follow that earlier case, the applicant has appealed to the Court of Justice (Case C-447/10 P). It contends that the General Court had erroneously held that Article 8(4) does not require proof of genuine use of the sign in support of the opposition, as required by Article 43(2) of the Regulation.
The CTM register, and national and regional trade mark registers, are becoming more crowded all the time. The stock of available trade marks is becoming depleted. It is already hard – perhaps too hard – to obtain registration in the face of local or distant oppositions, one of many ways in which the trade mark system of the European Union is failing businesses. This is another aspect of the problem highlighted in the Pago case (reputation in one Member State) and (on the other hand) ONEL in Benelux and City Hotel in Hungary. The court’s view will be eagerly awaited – and perhaps this is a subject for the Max Planck Institute too?
I'll be coming back to this topic - it might be heretical, but I'm on the side of Benelux and Hungary.
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Interesting, I have registered a domain name, which phrase apparently has been registered by a US organisation in Europe. They are aware of what I have snaffled, but had I known when they were registering it, that they were, I would have raised objections that they had no prior moral right to it, particularly in Europe. (I and many others feel they have no rights to it in the USA but that is another matter)
So far the organisation has not complained to me about it, stating through UK intermediaries that they had no interests in Europe at that time. (This turns out not to be the case, though I am advised not to state any more publicly, having clashed with their European agent before.)
I think politically speaking that the organisation in question, is wary of the adverse publicity that any challenge would generate, especially considering that the content of the web site in question does not impugn their organisation in particular being concerned with wider questions of ethics.
If I knew of a mechanism to retrospectively challenge their right to use that phrase in Europe, and there were a simple, equitable, and cost free way for me to raise it with the appropriate authorities, I might possible court a decision in my favour, and have the trademark struck off. Such is politics.
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