Is use in only one single member state in EU enough for a Community Trademark?

In Insights, Uncategorized

12 March, 2013

If you have a registered EU trademark (“Community trademark”) today, which was registered for more than five years ago, what are the consequences in practice if you only use your trademark in one country within the EU?

The Court of Justice came with a ruling in case C-149/11 ONEL/OMEL on 19 December 2012, in which the question was assessed of whether use of a Community trademark in only one single member state within the EU is enough to fulfill the requirement of “genuine use” in the Community,

The background to this case is that the company Hagelkruis filed a trademark application for the word mark OMEL in Benelux for services in class 35 (e.g. advertising and marketing), class 41 (e.g. education, courses and training sessions) and class 45 (legal services). Leno is the holder of the Community Trademark registration ONEL in class 35, 41 och 45 and submitted an opposition against Hagelkruis’ application OMEL.

As a counter action, Hagelkruis requested that Leno should submit evidence of proof of use of its trademark ONEL within the Community. It turned out that Hagelkruis could only submit proof of use of its trademark in one of the member states of the Community: the Netherlands.

The question of importance in this case is if the use of a Community Trademark in one single member state is sufficient to meet the requirement of genuine use in EU consisting of 27 member states? If the holder of a Community Trademark has not put the trademark to genuine use in the Community within a period of five years following the registration, the trademark can be claimed to be invalid by a third party according to the Council Regulation (EC) No 207/2009 (previous Council Regulation (EC) No 40/94).

What is then the interpretation of “in the Community”? Would genuine use in the Netherlands in the present case be sufficient to prove genuine use?

The national court referred four questions to the Court of Justice for a preliminary ruling. However, the Court of Justice concentrated in answering the following question:

Should the assessment of genuine use in the Community be carried out without reference to the borders of the territory of the individual member states?

The Court of Justice stated that the previous Council Regulation (EC) No 40/94 must be interpreted as that the territorial borders of the member states should be disregarded in the assessment of whether a trademark has been put to “genuine use in the Community”. “A Community trademark is put to ‘genuine use’ when it is used in accordance with its essential function and for the purpose of maintaining or creating market share within the Community for the goods or services covered by it.

However, it is a task for the referring court to assess whether the conditions are fulfilled in the main proceedings. The assessment shall take into account all the relevant facts and circumstances of the case in question, such as the characteristics of the market, the nature of the goods or services, the territorial extent and the scale of the use, as well as its frequency and regularity.

One must also remember that the very purpose of the system of Community trademarks is to offer conditions, which are similar to those obtained in a national market. If particular importance is given to certain territories of the Member States that would prevent the objectives of the system and would be detrimental to the nature of the Community trademark.

From a practical perspective, it is interesting to observe that the Court of Justice does not provide any de minimis rule such as how many countries in the EU that is required to meet the requirement of “genuine use”.

In my opinion, as the territorial borders of the member states should be disregarded, the conclusion of this case should be that use of a Community trademark in one single member state could constitute genuine use depending on the particular circumstances in the case (such as extent and nature of use). The Court of Justice does not indicate whether the size of the geographical markets matters. Although, depending on the circumstances, since factors such as “the territorial extent” and “the scale of the use” in the Community should be taken into consideration it could be an advantage if you can prove “genuine use” of a Community trademark on larger markets within the Community.

Hence, the consequences in practice if you have a registered “Community trademark” today and if you only use your trademark in one single country within the EU are still uncertain. It is now up to the national courts in the member states to decide what influences the case ONEL/OMEL will have in practice.

However, remember that if you as a holder of a Community trademark would end up in a situation where it turns out that use in one country within the EU is not enough, you can always convert your Community trademark into a national trademark.

Helena Ribbefors, Attorney at Law

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