By Morag Peberdy and Jacqueline Clover

Yesterday, judgment was delivered by the Court of Justice of the European Union (“CJEU”) in the ONEL case on what constitutes genuine use of a Community Trade Mark (“CTM”).  A CTM can be revoked if there has been no genuine use in the Community for 5 years.  The conventional wisdom was that use in a single country, as long as it was more than de minimis use, validates a CTM across the EU.  This was called into question by the Benelux first instance decision in ONEL.  Many had hoped that the CJEU would confirm that use in only one European country constitutes genuine use in the Community.  However, the CJEU ruled that the territorial extent of the use is just one factor to be taken into account when assessing genuine use.  Other relevant factors include the specific market for the relevant goods and services, the nature of those goods and services and the frequency and regularity of the use.  Consequently, in some cases, use in one country alone will constitute real commercial exploitation, but on other fact patterns use across a number of countries may not suffice.

After grant a CTM may be revoked if it is not put to “genuine use in the Community” for a period of 5 continuous years if there are no proper reasons for that non-use (Article 15 of Regulation no 207/2009).  Opposition proceedings had been initiated for Benelux trade mark “OMEL” by the owner of the “ONEL” CTM.  At first instance the opposition was rejected on the basis that the ONEL CTM had been used only in the Netherlands, and therefore liable to revocation for non-use.  This was inconsistent with the view of many commentators, the CTM Registry and MARQUES (the industry trade mark organisation) was that use of a mark on a more than minimal level in a single EU country should constitute genuine use. 

On appeal, the Regional Court of Appeal in The Hague referred four questions to the CJEU in C-149/11 Leno Merken BV v Hagelkruis Beheer BV.  In summary, the questions were:

  1.  Is use in one country always enough?
  2.  If not, is it never enough?
  3.  If it is never enough, what is needed?
  4.  Should the assessment of genuine use in the Community be done in the abstract, without reference to the borders of the territory of the individual Member States?

Yesterday’s CJEU judgment held that restricting the analysis to purely geographical considerations would risk frustrating the key purpose of the CTM regime.  The analysis of genuine use should not be limited to where in the EU the CTM was used; “genuine use in the Community” does not necessarily require use in a substantial part of the EU.

This ruling has clarified that territorial scope of use is not a determinative issue or a gate-keeping item for genuine use, but merely one of several factors to be examined to determine whether there has been “real commercial exploitation”.  Although some may view this ruling as sitting on the fence, others will view it as a reasonable compromise, arguing that a categorical statement that use in a single Member State will (or will not) constitute genuine use could cause injustice, given the disparity in market size of different Member States.

As a practical matter, brand owners should carefully analyse the extent of “real commercial exploitation” of any CTM registrations which are more than 5 years old and only used in one Member State.  Where marks are potentially vulnerable, brand owners should consider filing a new CTM and/or national trade mark applications.

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Photo of Morag Peberdy Morag Peberdy

Morag Peberdy has broad experience in all areas of intellectual property, where she advises on both contentious and non-contentious issues. Her wide-ranging expertise includes patents, trademarks, designs, copyright, database rights and confidential information, and covers drafting intellectual property agreements and infringement and contractual…

Morag Peberdy has broad experience in all areas of intellectual property, where she advises on both contentious and non-contentious issues. Her wide-ranging expertise includes patents, trademarks, designs, copyright, database rights and confidential information, and covers drafting intellectual property agreements and infringement and contractual disputes. Her particular focuses have been on patent work in the life science sector, and in advising branded goods companies.