CJEU provides guidance on “genuine use” of Community Trade Marks required to avoid revocation for non-use

On 19 December 2012 the Court of Justice of European Union (CJEU) has issued an important decision providing further guidance on the territorial scope of “genuine use” of a Community Trade Mark (CTM) to enable its proprietor to avoid its revocation or attack for non-use.

In this case, Leno Merken BV (Leno), the proprietor of a Community word mark “ONEL” for services in classes 35, 41 and 42 opposed the Benelux word mark “OMEL” filed for similar services.

While the parties agreed that the two signs were similar and were registered for identical products or services, thereby creating a risk of confusion, the proprietor of the OMEL mark argued that the use made by Leno of his CTM in only one member state of the European Union was insufficient to constitute genuine use in the community in the sense of article 15 of CTM Regulation 207/2009.

The Benelux Office for intellectual property rejected the opposition on the ground that Leno had not shown that it had put its ONEL trademark to genuine use during the period of five years preceding the date of publication of the disputed trademark application. Leno appealed that decision to the Regional Court of Appeal of The Hague, which referred the question to the CJEU.

The question raised to the CJEU was in essence whether a genuine use of a CTM in a single member State would be sufficient to satisfy the requirement for genuine use in the Community within the meaning of article 15 of Regulation 2007/2009.

In response the Court held that whilst there was admittedly some justification for thinking that a CTM should – because it enjoys more extensive territorial protection than a national mark – be used in a larger area than the territory of a single member state in order for the use to be regarded as “genuine use”, in certain circumstances, the market for the goods or services for which a CTM had been registered was in fact restricted to the territory of a single Member State.

The Court concluded that in assessing whether a CTM had been put to “genuine use in the Community” within the meaning of article 15 of the Regulation 207/2009, the territorial borders of the Member States should be disregarded. The Court clarified that a CTM is put in “genuine use” within the meaning of this provision 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. The Court finally concluded that it was for the referring Court to make this assessment, taking into account all the relevant facts and circumstances, including the characteristics of the market concerned, the nature of the goods or services protected by the trademark and the territorial extent and the scale of the use as well as its frequency and regularity. [Béatrice Martinet Farano]