The Hungarian Patent Office (“HPO”) supported the decision of the Benelux Office for Intellectual Property (“BOIP”) in the ONEL/OMEL opposition case, in which BOIP stated that the use of a Community trade mark in one single Member State does not qualify as genuine use. As a result of the HPO’s official statement the reconsideration of OHIM’s practice, according to which it is enough to use the Community trade mark even in just a part of a single Member State in order to ward off the legal consequences of non-use, seems inevitable.
Recently, the HPO took a further step to support the new approach by deciding a Hungarian opposition case based on the new approach. The Hungarian trade mark “C City Hotel” (figurative mark in colour) was applied for by a Hungarian legal entity in respect of various services in Class 43. However, a company established in the UK filed an opposition thereto based on his trade marks “CITY INN” (figurative), and “CITY INN contemporary hotels” (figurative). The opponent argued that the contested Hungarian mark was applied for in respect of services mainly identical with and partly similar to those covered by his registrations and that there was likelihood of confusion with his trade marks. The opponent also referred to the reputation of the latter trade mark but failed to provide any proof thereof.
The Hungarian applicant requested in his response inter alia, that the HPO should request the opponent to submit proof of genuine use of his trade marks. The opponent submitted only proof of genuine use of his trade mark “CITY INN” claiming that five years had not yet elapsed since the registration of the other trade mark. The submitted documentation revealed that the opponent had used the trade mark “CITY INN” only in respect of his six hotels in the UK as well as on websites. Due to this the HPO rejected the opposition and registered the Hungarian trade mark, stressing that genuine use of a Community trade mark may not be established on use in only one Member State.
The Hungarian Trademark Act provides that a mark is not excluded from protection if it conflicts with an earlier Community trade mark which has not been put to genuine use by the proprietor in accordance with Article 15 of Council Regulation (EC) 207/2009 on the Community Trade Mark (CTMR). The HPO concluded that the proof of genuine use submitted by the opponent did not satisfy the requirements laid down in Article 15 of the CTMR which requires use in the territory of the Community. As to websites operated by the opponent, the HPO stated that the actual services were available for consumers only in the territory of the UK. In latter respect the HPO also referred to the Joint Recommendation concerning the Provisions on the Protection of Marks and other Industrial Property Rights in Signs on the Internet, adopted by the General Assembly of WIPO and the Assembly of the Paris Union in 2001.
The HPO – in line with the BOIP decision – argued that the contradictory Joint Statement of the Commission and the Council, providing that use which is genuine within the meaning of Article 15 in one country constitutes genuine use in the Community, is not legally binding. The HPO also stressed that at the time of adoption of the Joint Statement interpreting Article 15 of the CTMR, the European Union had only 12 Member States, a smaller geographical territory, smaller population and less economic importance. By now, application of the Joint Statement – adopted in different circumstances and having no legally binding nature – would be contrary not only to common sense, but also to sensible economic considerations.
According to the HPO sufficient scale of genuine use cannot be determined on the basis of a quantitative and mechanical approach linked to national borders. It would fit in the context of the original objectives of the Community trade mark more appropriately to focus on commercial activity crossing the borders of Member States. In determining whether a Community trade mark has been put to genuine use, the internal market of the European Union is to be examined as a unitary whole and a market-oriented approach is to be applied, taking into consideration all relevant circumstances of the case, in particular the nature of the goods and services concerned, instead of examining use in the relation to the territories of particular Member States. It is not possible to establish a unitary criterion which is generally applicable to all trade mark proprietors and the sufficient scale of genuine use is to be determined on a case-by-case basis.
The HPO concluded that use in one Member State cannot be considered sufficient to prevent others from obtaining bona fide rights in the other 26 Member States. It is not justified that an applicant wishing to obtain trade mark protection only in Hungary should lose the opportunity for doing so because another party is using a similar mark in one single Member State of the European Union. The HPO also added that in the reported case not even competition law considerations support such an outcome as the opponent has been operating hotels only in the UK. Had the opponent wished to extend his activities to the whole Community, there would have been ample opportunity for him to open hotels in other Member States as well.
The new approach will be presumably continued until a Hungarian Court will confirm or reject it. Hungarian Courts may also raise a question for reference to the ECJ for preliminary ruling.
 Joint statements by the Council and the Commission of the European Communities entered into the minutes of the Council meeting at which the Regulation on the Community Trade Mark is adopted on 20 December 1993, OJ OHIM 1996, p. 615.