Guido Jacobacci, Elena Monte
Article 15(1) of the EU Community Trademark Regulation (40/94) requires the owner of a Community trademark to make genuine use of the mark in the European Union in connection with the goods or services for which it is registered within five years of registration, and to ensure that such use is continuous.
Noncompliance with these obligations shall subject the Community trademark to the penalties set down in the regulation, unless there are valid reasons for non-use.
If no valid reasons for non-use exist, then:
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the trademark may be revoked as a consequence of an action brought by a third party, at least in respect of the goods or services for which no satisfactory proof of use has been submitted; and
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the trademark may not be enforced effectively against later conflicting trademark applications in opposition proceedings, at least in respect of the goods or services for which no satisfactory proof of use has been submitted.
Sufficient proof of use
Rule 22 of Commission Regulation 2868/1995, implementing the EU Community Trademark Regulation, clarifies that the indications and evidence for furnishing proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trademark for the goods and services for which it is registered and on which the opposition is based. In principle, the supporting evidence shall be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing that are sworn or affirmed, or have similar effect under the law of the state in which the statement was drawn up.
As regards the territorial extension of use, more recently Advocate General Sharpston raised doubts as to whether "using a trademark in one member state only supposedly suffices to keep a [Community trademark] alive”.
The opinion issued by Sharpston on 30th April 2009 in PAGO International GmbH v Tirol Milch registrierte Genossenschaft mbH (Case 301/07 ) proposed that the European Court of Justice adopt a two-stage test for deciding whether a trademark has acquired reputation in the European Union in order to qualify for extended protection under Article 9(1)(c) of the EU Community Trademark Regulation. This extended form of protection is available to Community trademarks with a reputation in the European Union against the use of similar marks for dissimilar products, irrespective of likelihood of confusion.
The proposed test would have two stages:
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the determination of whether the Community trademark has a reputation among a significant part of the relevant public; and
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the determination of whether the Community trademark has a reputation in the European Union - to qualify, the reputation must exist in a substantial part of the European Union.
Sharpston suggested that reputation in one EU member state may not suffice to decide that a trademark has reputation in the European Union and is therefore entitled to strong protection. In this connection, he was unimpressed with the analogy that use in one member state suffices to keep a Community trademark, as:
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that proposition has not been considered by the European Court of Justice; and
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revocation and infringement involve different considerations.
Conclusion
When it appears difficult to prove genuine use of a Community trademark, there may be added value in obtaining a national registration for the same trademark, particularly in Italy. On the one hand, due to the delays in the Italian Trademark Office issuing registrations (at present, registration is granted approximately four years after the filing date of the corresponding application), the obligation to use the registered trademark becomes effective only around nine years after the filing date of the application. On the other hand, if the owner starts using the trademark in Italy it may be easier to prove sufficient use for the Italian registration than for a Community trademark, thus presenting substantial advantages and reducing risk for the trademark owner.
