This blogger covered the fourth of these workshops, which was presented by Tove Graulund and Petra Goldenbaum. Tove opened with a summary of the background to the Max Planck paper. The imperative need to dispose of OHIM's extra cash and stop it building up again was the most significant trigger for reform, leading to fee reductions, the Cooperation Fund and various other items, but with no changes to the functionality of the system. Petra then took over, picking out key points of substantive law that required close attention. These included goods in transit, the nature of genuine use and the unitary nature of the European market, acquired distinctiveness and reputation and enforcement of costs orders. Petra described the circumstances of the Class
and Diesel/Montex ECJ
cases, which led to the proposal that the trade mark proprietor should be able to intercept and seize goods in transit so long as it held trade mark rights both in the country of transit and in the country of destination, and
that the goods be counterfeit. Debate then broke out as to whether this was a good thing or not, and the position of Ireland as a peripheral European country of destination was powerfully argued,
As for genuine use and the unitary character of the Community trade mark, Petra reported that the Onel/Omel case was still pending before the ECJ. The Joint Statement of the Commission and Council stated that genuine use in one country was genuine use throughout the European Union, but there have been various opinions as to whether this statement remains valid, if ever it was, as a proposition of EU law. Max Planck's proposal is that use in a single Member State should not be ruled out as use within the European Union, but that under certain conditions such use should not be a barrier to the registration of a later CTM. Discussion tended towards a general sentiment that, if we were all good Europeans, we shouldn't be worrying about this issue at all.
Turning then to distinctiveness acquired through use, this too is a matter concerning the unitary nature of the Community trade mark. Should it be necessary to show acquired distinctiveness in each country within the EU, or is it better to require proof of acquired distinctiveness only in relevant markets. Following PAGO, reputation of a Community trade mark "in the Community" is established when it exists in even one Member State. The Max Planck approach is to leave this situation as it is.
Conversion of dead Community trade marks and applications into national applications was then tackled in some depth, particularly where OHIM refuses an application on grounds, such as linguistic grounds, that apply only in some EU Member States but not others. Applicants lose their priority dates if they can't convert, but OHIM practice is often to refuse an application on one ground without considering other possibly operative grounds of opposition.
Next, Petra turned to enforcement of costs. This blogger mentioned the findings of a recent and soon-to- be-published survey that suggests that security for costs is the most popular available option, rather than the Max Planck proposal of certified costs orders being enforceable in Member States via a nominated authority.
Finally Tove took over again and turned to cluttering. Is it a product of the Community trade mark system -- or of the fact that there is a crowded marketplace? Even outside of Max Planck, people have been discussing this for years. Much depends on the line of business too. It's not even clear as to whether there is a problem and, if so, how best it can be sold. Choice of more distinctive names and making it more expensive to file for extra classes were among the solutions considered, as well as the unpopular possibilities of shortening the period before renewal is needed and requiring proof of use on renewal. Fast, cheap oppositions were also mentioned as a means of cleaning the clutter.