Genuine Use of Trademarks Proper Reasons for Non-use WWW.UPV.CZ Genuine Use of Trademarks Proper Reasons for Non-use INDUSTRIAL PROPERTY OFFICE OF THE CZECH REPUBLIC Michaela Simandlova & Marketa Tulachova

Genuine use of a TM in the EU Czech Act on Trademarks (No 441/2003 Coll.) – not equivalent to Article 42(2) of the Regulation No 207/2009 (proof of use of the earlier TM on request of the applicant in opposition proceedings) equivalent to Article 57(2) of the Regulation (proof of use of the earlier mark on request of the proprietor during invalidity proceedings) – very rarely used Revocation proceedings – only Czech national TM – no experience in assessing genuine use with respect to the EU (Community)

Proper reasons for non-use C-246/05 - Armin Häupl obstacles: a direct relationship with a trade mark make the use of a trade mark impossible or unreasonable independent of the will of the proprietor of that mark

Proper reasons? Provisional refusal of protection (international TMs) Inability of the proprietor to access the premises of production Illness of the proprietor Inheritance proceedings Insolvency proceedings

Provisional refusal of protection 1995 - registered at WIPO with designation for CZ 1996 – provisional refusal of protection (identical earlier mark) 2003 – definitive refusal of protection –> appeal –> 2004 - grant of protection (expiry of the registration of the earlier mark) 2005 – application for revocation

Provisional refusal of protection Relevant period– 2000-2005 TM was not used Proprietor – reasons for non-use were proper because the protection in CZ was provisionally refused and there was legal uncertainty as to the future protection of the TM in CZ Applicant – there were no obstacles to use; the uncertainty was caused by the proprietor himself in seeking protection for a mark identical to an earlier one

Provisional refusal of protection It was considered to be a proper reason: International TMs – the 5-year-period starts after registration at WIPO regardless of the actual granting of protection by individual states – disadvantage compared to national TMs In case of using the mark without it being protected in CZ there would be a risk of infringing the rights of others -> the use would be unreasonable

Inability of the proprietor to access the premises of production O-122126 SOBES (for wine) Application for revocation – 2004 Genuine use was not proven Reason for no other use: the applicant rented proprietor’s vineyard until 1999, after which the contract was terminated by the proprietor; despite actions taken by the proprietor, applicant refused to vacate the vineyard until 2004

Inability of the proprietor to access the premises of production Illegal denial of access to the production premises, despite actions taken by proprietor to gain access, is a proper reason for non-use The vineyard in question is limited in size and is traditionally the only place where Sobes wine has been produced – producing a wine named Sobes in a different vineyard would be deceiving The use of TM was impossible and independent of the will of the proprietor

Inability of the proprietor to access the premises of production If the location of production is unique and access is impossible for reasons independent of the will of the proprietor, it is a proper reason for non-use If the location of production (or providing services) is not unique, it would probably not be considered a proper reason for non-use

Illness of the proprietor Inheritance proceedings O-107763 „Maminka 96“ (for magazines, publishing) 2004 - Application for revocation (relevant period 1999 – 2004) TM was not used; proprietor natural person 1997-2002 - serious illness of the proprietor followed by his death 2002-2004 - inheritance proceedings

Illness of the proprietor Application of : - T-156/01 - Laboratoires RTB, SL v OHIM - the concept of proper reasons must be considered to refer to circumstances unconnected with the trade mark proprietor which prohibit him from using the mark Illness – a circumstance connected with the proprietor – does not prohibit him from using the TM, could have granted licence or transferred it

Inheritance proceedings Civil Code (no. 40/1964 Coll.) ; Civil Court Procedure Code (no. 99/1963 Coll.) - Control over inheritance – trustee; if not appointed – heirs (court´s approval needed for anything more than usual management) - Before the final decision is issued, there is legal uncertainty about the future proprietor of TM It is proper reason for non use

Insolvency proceedings In the case where insolvency proceedings are opened by Court, an insolvency administrator is assigned who acts on behalf of the company Insolvency proceedings can last the whole relevant period

Insolvency proceedings Application of T-156/01 – circumstances associated with commercial difficulties are not proper reasons for non-use TM can become part of the insolvency assets TM of high value revoked after 5 years for non-use; could be speculative strategy of other entities to gain the TM for free

Questions for you What are the proper reasons for non-use according to your national laws? Is it possible for the applicant to request proof of use of the earlier CTM in opposition proceedings according to your national law? Application of CTMR – Is the proof of genuine use of the CTM in one EU country considered sufficient?

Thank you for your attention ! Název prezentace Jméno a příjmení Thank you for your attention !