skip to main content skip to accessibility policy

IP Cases & Commentary – Details

14 March 2013

Case overview: Court of Justice Decision on Genuine Use of a CTM in the Community in ONEL v OMEL

Jeremy Pennant

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’.


  • 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.


Bookmark and Share

Follow us

Newsletter subscriptions

In support of our environmental policy we encourage email subscriptions to receive our patent and trade mark newsletters as soon as they are published. Please send your contact details to

For RSS users

Our RSS news feeds allow you to see when we have added new content to our website so you can get the latest site updates in one place, as soon as they are published.

Social media

Privacy Policy

We are committed to protecting and respecting your privacy. To understand our views and practices regarding your personal data and how we will treat it please see