Genuine Use of a CTM in the Community in ONEL v OMEL

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). The issue in question was essentially whether Article 15(1) CTMR must be interpreted as meaning that the 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 in the assessment of that requirement. Leno had only showed use of the ONEL mark in the Netherlands.

The Court noted that: “There is no reference in the text of Article 15(1) to the territories of the Member States. However, it is clear from the provision that the Community trade mark must be used in the Community.”

Regarding the intention of the provisions of the Regulation in question, the Court stated: “It is apparent that the regulation seeks to remove the barrier of territoriality of the rights conferred on proprietors of trade marks by the laws of the Member States by enabling undertakings to adapt their activities to the scale of the Community and carry them out without restriction. The Community trade mark thus enables its proprietor to distinguish his goods and services by identical means throughout the entire Community, regardless of frontiers. The purpose of the system of Community trade marks is …to offer on the internal market conditions which are similar to those obtaining in a national market. In that context, if it were held that particular significance should be given, in the framework of the Community arrangements for trade marks, to the territories of the Member States, that would frustrate the objectives (above) and would be detrimental to the unitary character of the Community trade mark.”

The Court therefore concluded that: “It follows from the foregoing considerations that the territorial borders of the Member States should be disregarded in the assessment of ‘genuine use in the Community’ within the meaning of Article 15(1) of Regulation No 207/2009.”

Refusing to set out any definitive guidance on the necessary scope of use of mark in the EU, the Court stated: “..it is impossible to determine a priori, and in the abstract, 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”.

The Court declined to comment on the factual circumstances of the case referred to it, stating that it: “..does not have the factual information necessary to enable it to provide the referring court with more specific guidance as to whether or not there is genuine use of that trade mark”, and “it is for the referring court to assess whether the mark in question is used in accordance with its essential function and for the purpose of creating or maintaining market share for the goods or services protected.”

In summary therefore, the answer to the referred questions was that Article 15(1) CTMR 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’.

The decision appears to be consistent with the approach of the Advocate General and adopts 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 of a trade mark in the EU.

The 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 that use is genuine. In our earlier legal update (see related resources) we commented on the comprehensive study by the Max Planck Institute which suggested that genuine use should be assessed on a case by case basis. That position would appear to have been adopted by the Court of Justice.

Useful links

Full text: Leno Merken BV v Hagelkruis Beheer BV, Case C 149/11, 19 December 2012