ECTA 2013: lawyers divided over ONEL decision

20-06-2013

Attorneys at the ECTA conference in Bucharest gave contrasting opinions on the impact of last year's long-awaited ONEL decision from the Court of Justice of the European Union (CJEU).

The court found that territorial borders of EU member states should be disregarded when assessing the genuine use of a Community trademark (CTM), but did not clarify whether use in one member state sufficed to show genuine use overall.

Speaking in a session entitled Genuine use in the EU: what the ONEL case tells us, Myrtha Hurtado Rivas, global head of trademarks at pharmaceutical company Novartis, said the ruling's impact on "global companies" would be minimal.

There are unlikely to any "major effects" on multinational companies' concerns about opposition and cancellation proceedings, she said, noting that the two existing major worries for drug companies when trying to obtain trademark protection are finding legally available marks and receiving approval from health authorities.

Class five is particularly cluttered, Rivas claimed, while 43 percent of trademarks sent to health regulator the European Medicines Agency last year were rejected.

"Not a lot will change," she said of the decision's impact on global firms, adding that "if we understand that use in one member state in the EU is not sufficient to establish genuine use of a CTM, ONEL could have a positive impact on global companies".

In response to Rivas, Dr Alexandra von Bismarck, partner at Field Fisher Waterhouse LLP, said ONEL's impact on small and medium-sized enterprises (SMEs) may be rather more burdensome, forcing them to re-think their trademark filing strategies.

If SMEs have to show use in more than one country, von Bismarck said, "they might not have the resources" or be able to "fulfil the criteria for genuine use" if they only sell products in one country.

She said SMEs may consequently turn their attention to filing only national marks, especially if they face budgetary constraints. Filing both CTM and national applications would be the safest option for obtaining trademark protection, she said, but would incur the highest costs.

The decision therefore creates "severe legal uncertainty", according to von Bismark, who said that there may be more cancellation actions filed as well as more defence actions in response.

She added: "The CJEU contradicts its own ruling because it leaves the final assessment of genuine use to courts in member states without providing any guidelines to them. We need further guidelines to be incorporated into law."

The session's moderator, Carolin Kind, attorney at German law firm Greyhills Rechtsanwaelte, said there is still no common EU position on assessing genuine use.

"In some states, use in one state is enough; in others, there is no consensus; and in others, it depends on the circumstances."

"National courts and offices will need to provide more guidance."

The ECTA conference finishes on Friday.

This article was first published on 21 June 2013 in World IP Review

CJEU, ECTA, ONEL

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