AG's Opinion on Harmonised Non-Use Legislation

In a preliminary ruling case forwarded to the ECJ by the Austrian Oberster Patent- und Markensenat (OPM) and closely monitored by the Austrian IP community, advocate-general Damaso Ruiz-Jarabo Colomer delivered his opinion on 26 October 2006 (C?246/05 - Häupl vs. Lidl). If followed by the ECJ, the opinion will have revolutionary impact on non-use legislation and jurisprudence throughout Europe.

On 13 October 1998, an action had been filed at the Nullity Division of the Austrian Patent Office, requesting that international trade mark no. 608.826 LE CHEF DE CUISINE (word & device) be declared invalid for the territory of Austria because the trade mark's owner, German company Lidl Stiftung & Co. KG (represented all the way up to and before the ECJ by the firm Sonn & Partner Patentanwälte), had failed to use the mark within the five years preceding the filing of the action. The application of international mark no. 608.826 had been filed in Germany on 12 October 1993 and was registered with that date as "registration date" by WIPO. The date of the actual entry into the international register in accordance with rule 17–(1) of the then applicable Common Regulations was 2 December 1993. At that time, this date was still published in the Gazette.

On 16 July 2003, the Nullity Division confirmed the invalidity of the international mark for the territory of Austria. It based its decision on the fact that Lidl had commenced to use its mark on 5 November 1998 only. The Nullity Division stated that "the completion of the registration procedure" according to article 10–(1) of Council Directive 89/104/EEC (Harmonisation Directive) is identical with the start of protection which, in Austria, is the so-called "registration date" of the international mark.

Upon appeal, the OPM addressed the question to the ECJ whether article 10–(1) of the Harmonisation Directive was to be interpreted as meaning that the "date of the completion of the registration procedure" meant the start of the period of protection.

In his opinion issued on 26 October 2006 (not yet available in English), advocate-general Colomer replied that the "date of the completion of the registration procedure" referred to the date on which WIPO has in fact completed the procedure of entry into the international register.

National Laws of the vast majority of the EU Member States presently provide provisions specifying a date differing from the one set out in the AG's opinion. Thus, if the ECJ follows the AG's opinion, amendments of virtually all Trademark Acts in the European Union will be necessary.

Dipl.-Ing. Helmut Sonn, patent attorney