Moderated by Jean L. Pire (Gevers & Partners) featuring speakers Claes Agnvall (Zacco), Ruth E. Annand (Taylor Wessing LLP), Olof Fickert (Herrero & Asociados, S.L.), Hub. J. Harmeling, (Freshfields Bruckhaus Deringer), and Olga M. Nedeltscheff (Limited Brands, Inc.).

Moderator Jean L. Pire played the part of a prospective client polling his panel of E.U. counsel on the “breaking point” between mark use and registration under European Community Law and on a National Member State level.  He provided the example of a company seeking to use the silhouette of a cat as its mark for beverages and nuclear power plant services.

The panelists noted at the outset that guidance might be found in Directive 89/104/EEC (21-Dec-1988), and Council Reg. (EC) 40/94 (20-Dec-1993).  The first question posed to the panel was whether use of the mark in Malta would satisfy use requirements to maintain a CTM mark.  Based on guidance from the above statutes, the panelists agreed the answer could go either way.  As to “Genuine use,” the panelists noted that on a national level, the ECJ decision in Ajax / Ansul required that the essential origin function must be preserved such that token and internal uses would not generally suffice (the mark must continually preserve or create an outlet for the goods or services).  Furthermore, the use must be one in which there is a contact with a consumer, but the nature of the goods or services can be significant in defining the scope of this.  According to the ECJ case La Mer, there is no quantitative threshold, and on remand, the English Court of Appeals held that use by a single importer was sufficient.  Significantly, this is treated different in each European jurisdiction (generally free samples distributed to consumers may suffice, whereas mere advertising would not).  Furthermore, the extent of use and market share might bear on the analysis.  In the CTM, often a category / sub-category approach is used whereas in the U.K., courts look at the nature of the use, and how consumers perceive the mark.  Somewhat similar to the U.S. model (where in renewal applications and affidavits of use, goods which are not in use should be stricken to avoid future challenges based on fraud or otherwise).  As to timing, if not used in 5 years, a mark is likely to be revoked if challenged, but each jurisdiction has different periods from which this 5 year period begins, especially where there are oppositions.

The bottom line: E.U. use requirements are complex and varied and while they may fit a general framework, the nuances would often warrant consulting local counsel.