ONEL v OMEL Genuine Use of a CTM in the Community
The Advocate General (AG) has issued his opinion in the much anticipated ONEL case on the territorial extent of use required to constitute 'genuine use' of a Community trade mark (CTM) in the Community.
The opinion is based on questions put to the Court of Justice by a Dutch court on the meaning of the term "put to genuine use in the Community" under Article 15(1) of the Community Trade Mark Regulation (CTMR). In particular, the Dutch court asked the Court of Justice for a preliminary ruling on the following four questions:
- Must Article 15(1) of the CTM Regulation be interpreted as meaning that use of a CTM within the borders of a single Member State is sufficient to constitute genuine use of that trade mark, given that, had it been a national trade mark, such use would have been regarded as genuine use in that Member State?
- If the answer to question 1 is no, can the use of a CTM within a single Member State as described above never be regarded as genuine use in the Community?
- If the use of a CTM within a single Member State can never be regarded as genuine use in the Community, what requirements apply, in addition to the other factors, in respect of the territorial scope of the use of a CTM when assessing genuine use in the Community?
- Or else, as an alternative to the above, must Article 15 CTMR be interpreted as meaning that the assessment of genuine use in the Community should be carried out wholly in the abstract, without reference to the borders of the territory of the individual Member States (and that, for example, market share (product markets/geographic markets) should be taken as the point of reference)?
The AG recommended that the Court of Justice respond as follows:
A. Use of a CTM within the borders of a single Member State is not, of itself, necessarily sufficient to constitute genuine use of that trade mark, but it is possible that, when account is taken of all relevant facts, use of a CTM within an area corresponding with the territory of a single Member State will constitute genuine use in the Community.
B. Genuine use in the Community within the meaning of Article 15(1) CTMR is use that, when account is taken of the particular characteristics of the relevant market, is sufficient to maintain or create market share in that market for the goods and services covered by the CTM.
The AG is therefore of the opinion that use within a single member state is not necessarily sufficient to constitute genuine use within the meaning of Article 15(1) CTMR but that it is possible that it might be found to constitute genuine use taking into account all other relevant factors.
The AG pointed out that, even if a national court were to find that use in a Member State was not enough to constitute genuine use in the Community, that would not prevent it from finding that the use was genuine under national law.
The AG seems to have adopted a compromise between two possible alternative outcomes that does not appear to provide brand owners with a definitive answer regarding the geographical extent of use in the EU but rather sits on the fence.
Should the Court of Justice follow the AG's opinion (which it is not bound by but usually follows), the geographical extent of use of a trade mark will remain just one of various factors that national courts should take into account when assessing whether that use is genuine. Opponents may not be able to rely on proof of use in just one Member State of the EU.
Earlier this year, a comprehensive study by the Max Planck Institute suggested that there should be no requirement that a CTM must be used in more than one Member State. The study suggested that genuine use should be assessed on a case by case basis (see related articles, right). That position appears to have been adopted by the AG and it remains to be seen whether the Court of Justice agrees.