Posted online only yesterday was the decision of the Irish Supreme Court (Hardiman J, Fennelly J and, giving judgment for the court, Macken J) of 19 May 2010 in Compagnie Gervais Danone v Glanbia Foods Society Ltd [2010] IESC 36 (thank you, Gemma O’Farrell, for the tip-off).

This is an appeal from a judgment of the High Court (Finlay Geoghegan, J.) which was delivered over three years ago, on 20 April 2007. Danone, which sold ACTIVIA yoghurt under its DANONE house mark, describing that product as containing “bifidus essensis”, said Glanbia had infringed its ESSENSIS trade mark by selling ESSENCE yoghurt; the trial judge dismissed the action, held that Danone had not made any genuine use of its Irish trade mark ESSENSIS for the goods in Class 29 yoghurt) for which it was registered for the statutory period of five years from the date of publication of the registration, and revoked the mark for non-use under s.51(1)(a) of the Trade Marks Act 1996. A further defence, that the ESSENSIS mark was registered in bad faith, was rejected.

The Supreme Court allowed Danone’s appeal. The trial judge had accepted that the word mark ESSENSIS had been used in the phrase “bifidus essensis”, but did not consider (having looked at the relevant Court of Justice case law in Case C-40/01 Ansul) that this use was in relation to yoghurt itself, rather than for a culture which was an ingredient of yoghurt and which was properly categorised within Class 1, and that the use of the mark in this manner was not in accordance with its essential function — indicating the identity of the origin of yoghurts. She also concluded that genuine use of the mark in respect of yoghurt would require consumers to understand that the mark in question actually related to yoghurt, for which it was after all registered. There was however nothing in law to compel the conclusion that the use of a trade mark in relation to an essential ingredient of a product was not also a use of that same mark in relation to the product itself. Nor was there any basis upon which to draw a distinction between the use of a trade mark in respect of spare parts for a product (as in Ansul) and in respect of its ingredients. Further, the rule in Ansul was not limited to the specific facts of that case — thus inviting judges to distinguish other cases from it — but was formulated as a general rule to apply in all cases involving genuine use.

Says the IPKat, there’s lots of fun stuff in this decision, including some detailed textual analysis of the words and the linguistic significance of the Trade Mark Directive. Thus the court says

“There are two matters it seems to me, which arise from this argument. The first … concerns whether … the phrase “in connection with the goods” in the Directive (or in the case of the Irish legislation “in relation to the goods”) can properly be said to be in any way materially, or even reasonably, different from the phrase “for the goods or services” found in other language versions of the Directive. Although certain dictionary meanings were considered in the course of the exchanges during the hearing of this appeal, I am not at all satisfied that there is any evidence before this Court from which it could be concluded that there is any real distinction, linguistically speaking, between the various phrases used in the different versions of the same Directive, and I do not find either that this was a serious issue in the High Court or one considered by the learned High Court judge in her judgment. Indeed, I am satisfied that the more vague phrase “for the goods or services”, which is in no way limited linguistically, does not, on any reasonable interpretation, necessarily mean “on the products”, if by that phrase is meant physically on the products. Nor is it narrower than either the phrase used in the English language version of the Directive, or in the Act of 1996, as contended for by the respondent”

and

“… no real distinction in law can be drawn between the requirements for use as expressed by the phrase “in connection with the goods” or indeed “in relation to the goods” on the one hand, and the phrase “for the goods” on the other hand, and in this judgment I deal with the phrase occurring in the English language version of Article 12(1), as transposed into Irish law by the Act of 1996, as if all three phrases were identical”.

Let’s hope those issues don’t arise again.

Yoghurt or yogurt? Here

Yoghurt and health here

Yoghurt and cats here

Very unkind joke about yoghurt (click here and search for ‘yogurt’)

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The IPKat has caught the distant sound of Dutch trade mark personalities discussing the recent and still controversial OMEL/ONEL case, in which use of a Community trade mark in just one of the 27 Member States was not considered to be genuine use of an earlier mark in Benelux opposition proceedings (see the IPKat here, here and here). What the Kat heard, from a little bird, runs like this:

“ONEL — the opponent in the proceedings in question — is believed to be related to another firm, Knijff (the two share the same address and PO Box number), and some folk have asked whether this may case may have been cleverly crafted in order to stir up debate and perhaps obtain an authoritative ruling on an issue which certainly needs clarification.

OMEL, the opposed trade mark application, was filed by Hagelkruis Beheer B.V., a holding/real estate company with no employees and just a single shareholder, his wife being the “acting” director. The company registered a Benelux mark without a trade mark attorney. That is not very odd by itself, but rather odd if you consider that this application was filed only in the Benelux in order to secure a basic registration in order to obtain through the Madrid system some registrations in Scandinavia. I have never heard of small, non-represented clients in the Benelux using the Madrid system. What’s more, the arguments that Hagelkruis raised are “too good” to have come from a person who has not specialized in trade mark law …”.

The IPKat is prepared to keep an open mind, since the ways of both businesses and trade mark practitioners around Europe are bound to differ from country to country; what’s more, any lay person who regularly reads this blog and Class 46 would soon be expected to obtain a good education in European trade mark law. Merpel’s not so sure: she still wonders about the European Court of Justice references in Case C-283/01 Shield Mark and Case C-273/00 Sieckmann, where the principal actors were IP practitioners themselves. Nothing to wonder about, says the IPKat — intellectual property attorneys are allowed to use trade marks too, and any system that leaves gaps in its legislative details deserves to have those gaps filled in. But even so, it would be good to know a bit more about the background of this dispute.

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Wasting no time in (i) issuing a decisive statement and (ii) agreeing with the position taken by the IPKat himself, European trade mark organisation MARQUES has come down firmly against the controversial ruling of the Benelux Office for Intellectual Property (BOIP) that the use of a Community trade mark in just one of the 27 Member States of the European Union did not constitute “genuine use” on the part of an owner relying on that mark in opposition proceedings against a later and undeniably similar mark.

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The IPKat’s post on Friday (“When ‘genuine’ isn’t genuine”, here) has attracted a lot of interest. The notion that use of a Community trade mark in just one EU Member State might not constitute ‘genuine use’ in the territory of the EU as a whole — as the Benelux IP Office has held — has apparently been a bit of an accident waiting to happen. Anyway, the IPKat has received this very thoughtful piece from Ben Mooneapillay (partner, Fry Heath Spence), who is keen to know whether other readers agree with his analysis. He writes:

“I agree with the decision and have always thought that use in one Member State is insufficient. Here’s why:

1. The preamble to the Council Regulation 40/94 states that “legal conditions must be created which enable undertakings to adapt their activities to the scale of the Community whether in manufacturing and distributing goods or in providing services”. By observing that the Community is a large market where undertakings need to adapt to its size (“scale”), the preamble provides a hint that use “in the Community” requires use than in more than one Member State.

2. The preamble to the Council Regulation 40/94 also states that “national trade marks continue to be necessary for those undertakings which do not want protection at the Community level”. If use in one Member State is sufficient to uphold a CTM registration, then there is an inherent contradiction between this and the pre-amable to the Council Regulation because national trade marks would not really be necessary at all. Furthermore, the preamble acknowledges that there is a difference between registration at the national level and at the Community level; thus there must be a difference between use at the national level (by this I mean use in one Member State) and the Community level.

3. The First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104) states that “whereas in order to reduce the total number of trade marks registered and protected in the Community and, consequently, the number of conflicts which arise between them, it is essential to require that registered trade marks must actually be used or, if not used, be subject to revocation”. The reduction of the number of conflicts is an integral part of trade mark law at the Community level. Therefore, to permit a local trader to have a monopoly right throughout the entire Community on the basis of only localised use appears to go against the spirit of the Directive.

4. Whilst I note the joint statements by the Council and the Commission (of 20.10.1995, No B. 10 to 15, OJ OHIM 1996, 615) relating to use in one Member State, these are not binding and I agree with the BOIP that these statements are incorrect. Articles 15 and Article 50 are silent with respect to the geographical spread of use required; however, Article 108 (2) (a) envisages a scenario whereby a CTM will need to be converted even when proof of genuine use in one Member State has been submitted. Article 108 (2) (a) reads as follows:

“2. Conversion shall not take place:

(a) where the rights of the proprietor of the Community trade mark have been revoked on the grounds of non-use, unless in the Member State for which conversion is requested the Community trade mark has been put to use which would be considered to be genuine use under the laws of that Member State;”

Thus, the Regulation acknowledges that proof of use in one Member State is not sufficient, but provides an equitable remedy (conversion) in circumstances where a trader has used his mark in only one Member State.

5. The purpose of Article 108 (2) (a) is to allow conversion where proof of genuine use has been provided for the Member State concerned. That is not to say that the use is not genuine according to European standards, but that it must be genuine according to the standards of the Member State concerned (which are approximated by the Directive in any event). In other words, Article 108 (2) (a) does not say that the use must not be considered genuine at the Community level before the Article has effect.

6. In its opposition guidelines, OHIM states that “It must in any event be underlined that it is the European requirements or standards which must be complied with and not the national standards”. A situation where the use is not considered genuine by local standards, but genuine by Community/European standards, would lead to a farcical situation where use in one Member State is sufficient to maintain protection throughout the entire Community, but would not be sufficient to uphold a national registration in the Member State concerned. Therefore, assuming I am right about the interpretation of Article 108 (2) (a), the Regulation and OHIM practice says, in effect, the Office can decide that genuine use in one Member State is proven (by European standards), but that such use is not sufficient to uphold a CTM registration. Such a registration may be converted, provided it complies with local use standards.

7. Article 109 (3) provides as follows:

The Office shall check whether the conversion requested fulfils the conditions set out in this Regulation, in particular Article 108(1), (2), (4), (5) and (6), and paragraph 1 of this Article, together with the formal conditions laid down in the Implementing Regulation. If these conditions are fulfilled, the Office shall transmit the request for conversion to the industrial property offices of the Member States specified therein.

Whether Conversion requirements are met is therefore decided by the Office before the application for conversion is transmitted to the national trade mark office. The Office is only in a position (I believe) to decide whether the proof of use is sufficient for its own purposes (i.e. by its own standards). Any request for conversion under Art. 108 (2) (b) that is transmitted to the local office must have been checked for genuine use by OHIM according to its standards. Thus, if genuine use in one Member State is sufficient to maintain a CTM registration, Article 108 (2) (a) would be redundant under current OHIM practice.

I appreciate that Art. 109 (3) relates to a procedural step and that this reasoning could be side stepped if OHIM is in a position to decide whether use is genuine according to local law/standards.

8. From a common sense perspective, if a CTM proprietor has only used his mark in one Member State in five years, then protection in one Member State is all that is required. Article 108 (2) (a) provides for this and if protection outside of one Member State is required going forward then the proprietor is free to re-file for his Community trade mark

I should perhaps add that I think the ECJ’s decision in Pago (Austria is a substantial part of the territory of the Community) does complicate matters a little; it is difficult to see how genuine use in a “substantial part” of the territory of the Community cannot not be considered genuine use “in the Community”. I guess if one interprets “in the Community ” as “in the Community at large ” that would remove Pago as a problem. Either that or we conclude that the ECJ was wrong to decide that one Member State is a substantial part …”

Says the IPKat, do you agree with Ben’s analysis? More to the point, would the Court of Justice of the European Union agree with it? Do let us know what you think!

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Fresh off the press from the IPKat’s deeply-appreciated old friend Professor Charles Gielen (NautaDutilh) comes a newsflash concerning a ruling last Friday from the Benelux Office for Intellectual Property (“BOIP”) that the use of a Community Trade Mark in EU Member State is insufficient to constitute genuine use of such a trade mark in the EU within the meaning of Article 15 of Community Trade Mark Regulation 40/94 (now Regulation 207/2009). Says Charles:

“This decision can cause problems for owners of CTMs that are used solely in one country of the Community. Such owners could be faced with the situation that after five years of use in one country, their CTM can be revoked because the BOIP perceives such use as not constituting genuine use. The judgment is particularly likely to have a huge impact for enterprises that are active locally and have registered a CTM which they use only in one country of the Community.

It can be argued that the BOIP is implicitly also stating that a Benelux trade mark is not genuinely used if it is used in solely one Benelux country. Accordingly, such Benelux trade marks could also be in danger after five years because the BOIP could perceive the use of such trade marks in one country or province as non-use in the Benelux.

The facts

In July 2009 Hagelkruis Beheer B.V. applied to register the word sign OMEL at the Benelux Office for Intellectual Property (“BOIP”) for goods and services in classes 35, 41 and 45. The application was published on 29 July 2009. Hagelkruis planned to use the trade mark OMEL in Norway and Sweden, and possibly in other Scandinavian countries too. The registration of the CTM was intended solely to serve as a basis for an international filing under the Madrid Protocol.

Leno Merken B.V. was the proprietor of an earlier CTM, ONEL, applied for in March 2002 and registered in October 2003 for goods and services in classes 35, 41 and 42 [Aha, says the IPKat -- ONEL is Leno in reverse!]. Leno Merken had operated as a firm of trade mark attorneys firm for over 40 yearsin the Netherlands, offering its services under the trade mark ONEL; its services were directed particularly at Dutch medium-sized enterprises.

Opposing the OMEL application, Leno Merken was asked to provide evidence of genuine use of its ONEL mark. While it was undisputed that Leno Merken had used its trade mark genuinely in the Netherlands, Hagelkruis argued that use of the trade mark in one country was insufficient to constitute genuine use within the meaning of Article 15 CTMR. Basing its opinion on the Joint Statements of the European Commission and the European Council in relation to the CTMR, Leno Merken also argued that the CTM system had always been promoted as a flexible system in terms of the extent of geographical use and that this was one of its strengths: by proving use of a CTM in one country, the owner obtains protection in a large territory and can retain this protection by meeting relatively low requirements.

Leno Merken asked the BOIP to rule that its ONEL trade mark had been genuinely used within the Community and to reject the application to register OMEL. Hagelkruis, in response, emphasised that the two trade marks would not be used in the same territories, adding that it totally disagreed with Leno Merken’s arguments that use of a CTM in one country should suffice to preserve that trade mark. In its view, the CTMR requires use “within the Community” — which is not the same as use “in one member state”.

Decision of the BOIP

The BOIP ruled that, based on ECJ case law, explanatory notes such as the Joint Statements are not legally binding (ECJ, Antonissen, C-292/89, 26 February 1991). Further, the findings in the Joint Statements were legally challengeable and were at odds with the second, third and sixth recitals to the CTMR.

The BOIP pointed out that it would lead to undesirable results if the territory of the Community was put on the same level as one member state. The EU had expanded to include 27 member states – a huge territory with a total population of over 500 million – and was expected to expand even further. The BOIP stated that, in view of this, use in only one country does not justify the broad protection provided by a CTM. To justify the exclusive right of a CTM, the mark must be genuinely used; but an exclusive right that reaches far beyond (or, in any event, beyond) the territory in which the trade mark is actually used would result in barriers to the free movement of goods and services within the internal market.

ECJ ruling awaited …

Concluding that use of a trade mark in one country is insufficient for the requirement of genuine use within the meaning of Article 15 CTMR, the BOIP rejected the opposition and allowed OMEL to be entered in the trade marks register.

The European Court of Justice has not yet had an opportunity to rule on this issue, but we can expect a decision along similar lines as those discussed above. CTM owners will have to carefully check where their trade mark is being used before opposing later applications”.

The IPKat begs to differ. He thinks this decision is wrong in principle and potentially damaging for businesses with trade marks. It would also be strange if the single territory of the Community adopted a different principle from that operating in member states, where the use of a trade mark in just one small corner of a very large jurisdiction is still regarded as genuine if it fulfils other criteria of use. The result may also be that a mark which has been used in the course of business in one member state only will fail to be regarded as genuinely used in revocation proceedings under Article 51 [Aha, says Merpel -- '51' is '15' in reverse!].

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