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Community Trade Marks and genuine use

Community Trade Marks and genuine use


In case C-149/11 Leno Merken v Hagelkruis Beheer B.V. (ONEL/OMEL) the Court of Justice of the European Union has issued its decision in response to questions referred to the Court of Justice by The Court of Appeal of The Hague, stemming from Benelux trade mark opposition proceedings and concerning the extent of ‘genuine use’ of a trade mark required to support the validity of a Community registration. 

The Applicant in the opposition proceedings sought registration for OMEL claiming ‘legal services’ and the Opponent is the proprietor of an earlier Community registration protecting ONEL for identical services.  The earlier Community registration relied upon by the Opponent was at that time over 5 years old and the Applicant requested that the Opponent provide evidence of genuine use of the earlier mark, in accordance with the provisions of Article 15 CTMR.

Article 15 CTMR provides that, if, within a period of 5 years following registration, the proprietor of a registration has not put the trade mark concerned to genuine use in the Community in connection with the goods or services claimed in the registration (or if such use has been suspended during an uninterrupted period of 5 years) the registration will be subject to the sanctions provided for in this Regulation, including cancellation.  In accordance with Article 42 CTMR, in the absence of proof of ‘genuine use’ of the trade mark relied upon by the Opponent, the opposition would be rejected.

The Opponent provided evidence that the mark had been used in the Netherlands, but did not provide evidence of use of the trade mark in any other territory.  On the facts of the case, which concerned trade marks used for the provision of legal services, (services required throughout the EU) the Benelux Office held that use of the earlier Community mark in the Netherlands only was insufficient to satisfy the requirements of Article 15. 

The Court of Appeal of The Hague referred four questions to the Court of Justice of the European Union for a preliminary ruling, in essence asking the Court to determine the extent of the territorial area in which the Community trade mark must be genuinely used in order to maintain the exclusive rights associated with registration. This is the first time that the Court has been asked to examine the matter with particular reference to geographic scope. 

The questions were considered together by the CJEU, which has ruled;

“Article 15(1) of Regulation No 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as meaning that the territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to ‘genuine use in the Community’ within the meaning of that provision.

A Community trade mark is put to ‘genuine use’ within the meaning of Article 15(1) of Regulation No 207/2009 when it is used in accordance with its essential function and for the purpose of maintaining or creating market share within the European Community for the goods or services covered by it. It is for the referring court to assess whether the conditions are met in the main proceedings, taking account of all the relevant facts and circumstances, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the use as well as its frequency and regularity.”

In providing the decision, which largely follows Attorney General Sharpston’s Opinion, the CJEU made a number of key comments; 

  • There is no requirement that the trade mark must have been used in a substantial part of the Community or an extensive geographical area, for the use to be deemed genuine.  The territorial scope of the use of the Community trade mark is not a separate condition for genuine use, but one of the relevant factors to be included in the overall analysis.
  • The national Court must take into account all of the facts and circumstances relevant to establishing whether or not the commercial exploitation of the Community trade mark serves to create or maintain a market share for the goods/services for which it is registered, including the characteristics of the market, the nature of the goods or services concerned, the territorial extent and the scale of the use, as well as its frequency and regularity of the use.
  • It is not possible for the CJEU to set a de minimis rule to be applied by the national Courts, as this could prevent a Court from appraising all the circumstances of the dispute before it in a particular case. 
  • Use in a single Member State could conceivably satisfy the requirement for genuine use, where the market for the goods or services for which the Community mark is registered, is restricted to the territory of a single Member State.

The case will now return to the referring Court for a decision.