Camille Janssen (Senior Lawyer, Benelux Office for Intellectual Property) opened the proceedings of the MARQUES Spring Meeting in Amsterdam with a review of the impact of EU case law and practice on national (and especially Benelux) practice.  Commenting that the word "Benelux" was used less often these days, now that international cooperation in a wider Europe has become the norm, Camille first explained the structure of BOIP and the scope of its activities, as well as the volume of work that passed through it. The office now functions in Dutch, French and English; it is self-financing and self-supporting.

Camille's review commenced with a discussion of the Court of Justice of the European Union in Case C-307/10 Chartered Institute of Patent Attorneys (the IP TRANSLATOR case) and its aftermath. The overriding principle is that ordinary people should be able to check the register in order to see what has actually been covered by a trade mark registration. That's why the CJEU emphasised that lists of goods and services for which registration is granted should be "clear and precise".  However, office administrators have a problem of where and how to classify goods and services within the framework of the Nice Classification. A third interest at play is the drive for convergence as between OHIM and national office practices, so that some degree of consistency should be achieved. The Common Communication on Vague Terms is something positive that has emerged from this exercise.

Camille next referred to the BOIP decision in HITMAN, dated only yesterday: it established that applicants using one or more of the 11 vague terms will be required to clarify them first, before they can secure registration, and that opponents will not be allowed to rely on them -- but that applicants who use them will be deemed to have applied for registration in respect of goods or services identical or similar to those of the opponent. The General Court's VOGUE ruling of 27 February [helpfully reported here on Class 46 by Laetitia] was raised, on the issue of whether it was possible for any to conclude -- without further information -- that "umbrellas" were similar to "accessories". Will OHIM appeal against this decision? "That might be an interesting one", he said.

The future of Article 28(8) of the revised CTM Regulation was next discussed: should there be a declaration, filed within six months from entry into force of the new Regulation, requiring CTM proprietors to amend or correct the goods or services for which they actually require registration but which are referred to only by their Class headings?  

Camille then swiftly moved on to BOIP's baby, the ONEL/OMEL reference to the CJEU in Case C-149/11, on the extent, if any, to which use of a CTM in a single country constituted genuine use of that mark in the European Union. He discussed the concept of use in terms of reputation, acquired distinctiveness and genuine nature, each of these being subject to different criteria on account of their different roles within trade mark law.  

So what has happened at national level since the CJEU's ruling in ONEL/OMEL? The BOIP and the UK IPO have applied it, as have the DPMA and OHIM. Nothing too terrible appears to have happened in result of it. The UK IPO is cutting corners a bit, Camille said, taking the view that any cross-border use was "okay", an approach adopted by OHIM too. The BOIP and the Hague Court are taking a rather more cautious approach and, in the VOODOO case, the Bundesgerichtshof has taken the view that use in one country is fine where that country is Germany. In terms of "bridging the gap" between national and Community protection, provisions relating to seniority and conversion from the former to the latter were relevant.

The registration of marks was then tackled, following the CJEU's ruling in Case C-196/11 P FORMULA ONE [noted back in May 2012 on Class 46 here]. What happens where a CTM is opposed on the basis of a clearly invalid national trade mark registration? The two systems are independent of one another, so national trade marks cannot be touched in CTM proceedings.