Trademark use and national boundaries


Michael Lantos

This article does not intend to provide yet another comment on the issue of using community trademarks (CTMs) in one or more countries since the Onel decision has made it clear that use of a CTM is not dependent on national boundaries.

What will be shown is that even in case of national trademarks, when use is concerned, national boundaries can be blurred and might lose significance. In national trademark laws, ‘use’ is a requirement within the boundaries of the corresponding jurisdiction. This has been clear for several decades. But with the increasing significance of electronic sales and the internationalisation of certain services, the issue has become less clear.

There are final court decisions in Hungary where the offer for sale of certain goods through the Internet which target domestic consumers has been found to be trademark infringement. A report concerning the ‘i-parfumeria’ trademark infringement case has been published, in which perfumes were sold by a foreign source through the Internet to Hungarian consumers in Hungarian, and the court established that such use constituted infringement.

If a use can be infringing, then it should also qualify as use in the sense of the use requirement. This means that the offer for sale from a foreign location targeting Hungarian consumers and proof of actual sale across the border should certainly qualify as use.

Trademark use, national boundaries, CTMs, Onel