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Genuine Use of a CTM in the Community in ONEL v OMEL

19 Dezember 2013

Court of Justice decision on genuine use of a CTM in the Community in ONEL v OMEL (Leno Merken BV v Hagelkruis Beheer BV) 19 December 2012

Key issues

  • Territorial extent of use required to constitute ‘genuine use’ of a Community trade mark (CTM) in the Community - can use in just one country save a CTM?
  • Leno owned a CTM for ONEL from 2002 but use was limited to the Netherlands. Leno opposed the Benelux application for OMEL. BOIP rejected the opposition claiming no genuine use.
  • Questions put to the Court of Justice by a Dutch court as to whether genuine use of a Community trade mark in a single Member State is sufficient to satisfy the requirement for genuine use in the Community or whether the territorial borders of the Member States should be disregarded.

Court findings

  1. Purpose of CTM system to offer a single internal market similar to those obtaining in a national market. If particular significance was given to the territories of the Member States, that would frustrate the objectives of the system and be detrimental to the ‘unitary character’ of the CTM.
  2. Impossible to determine what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not. A de minimis rule, which would not allow the national court to appraise all the circumstances of the dispute before it, cannot therefore be laid down”.
  3. Territorial borders of the Member States should be disregarded in the assessment of ‘genuine use in the Community’.

Comment

Decision adopts a compromise between two possible alternative outcomes that does not provide brand owners with a definitive answer regarding the required geographical extent of use of a trade mark in the EU.

Geographical extent of use of a trade mark therefore remains just one of various factors that national courts should take into account when assessing whether use is genuine.

Genuine use should be assessed on a case by case basis but use in one Member State may be enough to prove genuine use of a CTM but cannot be relied upon.

A strict application of a rule that use in one Member State is per se sufficient would have put the CTM owners in bigger Member States in a disadvantageous position.