Marques de fabrique ou de commerce
4. Please explain differences between "the genuine use" of a trademark described in Section 46 of the Trade Marks Act 1994 and "the use" of the trademark described in Article 19.1 of the TRIPS Agreement. In the case where a trademark is put to "the use" as stipulated in of Article 19.1 of the TRIPS Agreement, though not to "the genuine use" as provided for in the Trade Marks Act 1994, for three years after the lapse of two years of non-use, would the registration of the said trademark be cancelled?
Section 46 of the Trade Marks Act 1994 requires "genuine use" to maintain registration of a trademark, and not merely "use" which is the subject of Article 19 of the TRIPS Agreement. Once again, the words "genuine use" mirror those in Council Regulation (EC) 40/94. Articles 15 and 50 of Regulation (EC) 40/94 stipulate that if, within five years following registration, the proprietor has not put the Community trademark to genuine use, such mark shall be the subject of the sanctions provided for in the Regulation. In applying Article 19 of the TRIPS Agreement, the courts or other competent authorities of the Members of the WTO will have to interpret the concept of "use". In interpreting this concept, they may well arrive at the conclusion that, for example, the simple advertising of the trademark, with the only objective to prevent cancellation of the mark on the ground of failure to use, does not constitute "use" within the meaning of Article 19 of the TRIPS Agreement. In view of this, the reference to "genuine" use in the said Articles of the Regulation constitute an indication as to how the concept of "use" must be interpreted under Community law.