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The Community system was set up under the principle that if a trade mark was being used somewhere in the Community, even if only in one member state, this would be sufficient to maintain Community-wide rights. Recent developments, however, have called this into question.

If, in national trade mark proceedings, a trade mark holder seeks to oppose a national right on the basis of a prior Community registration, the issue of use of the Community mark can be brought into the national proceedings. This has happened in a case in the Benelux Office and the Benelux authorities have decided that - against the general guidance given by the Office in Alicante - to maintain a Community registration as a valid right against non-use allegations, it is necessary to show use in more than one member state of the Community. It is to be noted that the Benelux Office did not hold how extensive use must be, rather it held a mark to be unused where use was demonstrated in only one member state.

This decision has caused widespread concern and a number of national Offices within the Community have issued or are expected to issue statements indicating whether they will or will not follow the Benelux judgement. Some countries have already said they agree but others have said they don’t. The Community Office has stated publicly that it stands by its original position, that is, use in one only member state is sufficient to maintain a Community right.

The Benelux decision is under appeal but it is likely that an appeal will take a matter of two to three years at least to resolve, particularly if there is, as there may be, a further appeal to the European Court of Justice at the higher level. If the European Court decides to follow the stated position of OHIM, then the national authorities will have no option but to follow the ruling of the European Court. In the meantime, however, the situation is unclear.

A Community registration can only be invalidated through the Community Office but a Community mark can, nevertheless, be treated as though invalidated in the course of a dispute under national law by the relevant national authorities if they so choose. Community registrations are not themselves endangered in any way by present situation but an owner’s ability to enforce such registrations in some Community member states or to base oppositions brought under national laws on Community rights is affected.

Until the situation is resolved by the European Court, we would suggest that trade mark owners should review the geographical extent of their use of important marks in the Community. If use is ongoing in several member states then it would appear safe to assume that the rights given by a Community registration will be respected by the authorities in all member states of the Community. Therefore it is safe to allow national trade mark registrations which are still in effect to lapse in favour of Community registrations. If, however, use is restricted to one or maybe two member states, it may be worthwhile considering augmenting Community registrations with national registrations in those member of states of greatest commercial importance in order to be able to take quick and effective action against third parties in these states.

If you have any queries regarding this practice note or require any other information about us please contact your usual Reddie & Grose partner or Briget Harrison, Marketing Manager:-