What constitutes genuine use of a Community trade mark?
The Attorney General (AG) of the European Court of Justice has issued her opinion in relation to Leno Merken v Hegelkruis Beheer B.V., otherwise known as the ONEL case.
Background
In order for a Community trade mark (CTM) to remain valid it must be put to “genuine use in the community” in relation to the goods/services for which it is registered within the five year period after the date of registration. If the mark is not put to genuine use it can be revoked for non use. The issue in this case is what constitutes “genuine use” in the community and in particular, does use in only one of the 27 EU member states suffice?
Leno Merken, the proprietor of the mark ONEL, had filed an opposition against an application for the mark OMEL on the basis that the marks were similar and covered identical services. The ONEL registration used as a basis for the opposition was over five years old and therefore the applicant requested that the opponent file evidence that the mark had been put to genuine use in the community. However, the only evidence of use filed was limited to use of the ONEL mark in the Netherlands.
AG’s decision
The AG has stated that when assessing genuine use of a trade mark in the “community”, what matters is the commercial presence of that mark and although the geographical extent of use is important, it is only one factor in the assessment. Consequently, although a mark may only have been used in one country, you have to look at the impact that use has had in the community as a whole, and assess whether such use was/is sufficient to maintain or create the trade mark proprietor’s position in the market. The court must look at whether the mark has a commercially relevant presence in the community.
In order to make this assessment, the AG pointed out that the characteristics of the market for the goods/services being considered must be determined and it must be appreciated that such characteristics change over time. For example, use in a territory where such goods or services are in high demand may be more significant than use of the mark in a country where such goods or services are rarely required.
Therefore although use in one member state is not always sufficient to constitute genuine use, just because the use in question is solely in a single member state does not mean that it is not genuine.
In this particular case, the market for the services provided under the ONEL mark is particularly concentrated in the Netherlands and therefore use of the mark in the Netherlands should be given the probative weight. That is not to say, however, that use of the mark outside the Netherlands to other potential customers in the community should not be included in the assessment.
Conclusion
The AG is of the opinion that use of a CTM in one member state is not necessarily sufficient to constitute genuine use of the CTM and that such use should be assessed in relation to all other factors.
We now await the formal decision of the European Court of Justice, which is not obliged to follow the same reasoning as the AG but in recent years has often taken a similar or identical approach to the AG’s opinion. In the meantime, if you have any concerns as to whether your use of your CTM would constitute genuine use, please contact your usual trade mark attorney.
