Genuine Use of CTMin trade mark registration procedure before the

Hungarian Patent Office

- the „C City Hotel” decision -

Imre Gonda deputy-head

Trade Mark, Design and Model DepartmentHungarian Patent Office

5th Liaison Meeting on Trade Marks 10 and 11 June 2010.

Introduction

- balanced relationship between CTM and national TM

- increasing need for proper and detailed assesment of the territorial scope of genuine use

- concerns about the mechanical application of the Joint Statement and the practice of OHIM with regard to the proof of use

5th Liaison Meeting on Trade Marks June 10-11, 2010.

C-City Hotel application

Facts and proceduresign:

date of application: 12 February 2009

application Number: M0900377

list of G & S: (class 43) „cocktail lounge services, restaurants, hotel reservations, cafés, hotels, catering”

5th Liaison Meeting on Trade Marks June 10-11, 2010.

C-City Hotel application

Facts and procedure

- examination as to formal requirements- subtantive examination as to absolute

gorunds for refusal,- preparation of the search report (4

May 2009)- publication (15 June 2009)- opposition (4 August 2009)

5th Liaison Meeting on Trade Marks June 10-11, 2010.

C-City Hotel applicationOppositon

Based on CTMs000615336003168507

Ground for oppositionArt 4(1)b Art 4(1)c

Oral hearing was requested 5th Liaison Meeting on Trade Marks

June 10-11, 2010.

C-City Hotel application

applicant requested that the opponent submit proof of use of the earlier mark [Art 61/E. (1)]

documents submitted by Opponent:- statement of the director (existence of

operating Hotels in the UK, data of gross receipts),

- printouts from website (incl. pictures about the hotels),

- advertisments, leaflets,- reference to obtained awards 5th Liaison Meeting on Trade Marks

June 10-11, 2010.

Proof of use – points of departure

- Article 15(1) CTMR – reference to “genuine use in the Community”

- C-40/01 Ansul case – criteria for genuine use

- C-259/02 La Mer Technology – territorial scope

- T-39/01 HIWATT case – „genuine use means that the mark must be present in a substantial part of the territory where it is protected, inter alia exercising its essential function, which is to identify the commercial origin of the goods or services”5th Liaison Meeting on Trade Marks

June 10-11, 2010.

Joint Statement

Joint Statement (COM+Council): “use which is genuine … in a single country constitutes genuine use in the Community”

Legaly not binding

- C-292/89 Antonissen case (point 2) – general principle about the legal effect of joint statements

- C-418/02 Praktiker (points 45-48) – with regard to another Joint Statement relating to CTMR5th Liaison Meeting on Trade Marks

June 10-11, 2010.

Joint Statement

Further considerations for not applying it- original objectives of CTM- fundamental changes in the size of the EU

since 1993. - equal value of basic principles (autonomous,

unitary character, co-existence) CTMR- refusal of quantitative or mechanical

approach- different terms, but no synonymous (CTMR):

„in the Community” „in part of the Community” „in a Member State”

5th Liaison Meeting on Trade Marks June 10-11, 2010.

Decision N.o. M0900377/14 - on the proof of use and

opposition -

- HPO applied the „basic” principles for examining the proof of use

- evidence was insufficient to establish genuine use (CTM Reg. N.o. 000615336)

- opponent had not provide proof of reputation [Art. 4(1)c]

- no likelihood of confusion with CTM Reg. N.o. 003168507 [Art. 4(1)b]

- Σ: opposition was rejected

5th Liaison Meeting on Trade Marks June 10-11, 2010.

Aftermath of the decision

The opponent did not filed a request to review the decision.

Decision became final on 18 March 2010.

Presumption: - there was no real economic conflict - parties accepted the reasoning of the

decison 5th Liaison Meeting on Trade Marks June 10-11, 2010.

Useful links

Summary of the case:http://www.mszh.hu/English/hirek/kapcsolodo/

C_City_case_summary_ENfinal.pdf

Statement of the HPO on genuine use:http://www.mszh.hu/English/hirek/kapcsolodo/

HPO_statement.pdf

Regional Conference Coexistence of the Community and National Trade Mark Systems in Europe:

http://www.mszh.hu/English/RC/Programme.html

5th Liaison Meeting on Trade Marks June 10-11, 2010.

Thank you for your attention!

imre.gonda@hpo.huwww.hpo.hu

5th Liaison Meeting on Trade Marks June 10-11, 2010.