OMEL/ONEL – What constitutes “genuine use” in the European Union?
Community trade mark registrations (CTMs) need to be used within five years of registration to be valid unless there are good reasons for non-use. Acceptable reasons for non-use are rarely found. If a CTM is not used for the goods for which it is registered, it cannot successfully be used to prevent the later use of the same or a similar mark. Until the Court of Justice of the European Union (CJEU) decision issued on this particular case, it was assumed that genuine use in one EU state would support a CTM registration. This was because the Community Trade Mark Office, OHIM, had expressly stated that “use which is genuine … in one country constitutes genuine use in the Community”.
This important decision concerns the concept of “genuine use” as required by Community trade mark law and in particular whether such use in one EU member state can be considered sufficient to support a CTM.
Following an opposition to a Benelux trade mark application for OMEL by the owner of the CTM ONEL, proof of use of the earlier CTM was requested in accordance with usual opposition procedure. Upon assessment of the evidence submitted, which related to use in the Netherlands only, the Benelux IP Office controversially held that use of the trade mark ONEL in the Netherlands only was not sufficient to maintain the opposition and referred the matter to the Court of Justice of the European Union (CJEU) for guidance.
The Community Trade Mark Directive adopts the concept of “genuine use” in both non-use revocation actions and proof-of-use claims during the examination of an opposition. In both instances, it is required that the trade mark at issue has been put to “genuine use in the Community” in order for the registration/opposition to be maintained. No further guidance is given in relation to territory, only that use must be within the Community. No minimum or maximum rule for use in any EU member state is given.
However, a notable exception within the CTM Regulation is Article 112(2)(a) which, in some instances, permits the maintenance of a registration in one member state following the revocation of a CTM registration for the same mark if genuine use has been made in that one state. This exception suggests, by its mere inclusion within the Regulation, that use in one member state may not always be sufficient to constitute “genuine use in the Community” since, if such use were always sufficient, the provision would effectively be redundant.
As mentioned above, the Benelux IP Office asked the CJEU to provide a proper interpretation of the requirement for “genuine use in the Community”.
In the decision which issued on 19 December 2012, the CJEU stressed that, whilst still a notable factor in assessing the fulfilment of “genuine use”, territorial scope is only one of the many factors that must be considered when assessing genuine use. Such use must also be in accordance with the essential function of the trade mark, which is to act as a badge of origin, and for the purpose of maintaining or creating a market share within the Community. Use cannot merely be “token” and account must be given to “all of the relevant facts and circumstances, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity”.
With respect to the condition of territorial extent, the assessment must be made on an abstract basis. In other words, the “territorial borders of Member States should be disregarded” and an assessment should be made based on the use of the mark within the Community as a single territorial entity. This use need not be over an extensive geographical area in order to be sufficient.
This interpretation follows on from the original objective and purpose of the CTM Regulation – to remove the barriers of territoriality of trade marks from the single economic market of the European Union. It is under the proper understanding of the “frontier-less” Community and the unitary nature of CTM rights that this abstract all-encompassing assessment is to be taken.
Repercussions of CJEU Judgement
Whilst it does not provide set requirements for the extent of territorial use needed to constitute “genuine use in the Community”, this judgement by the CJEU does provide some clarity in relation to the conditions to be met in establishing “genuine use” across the European Community.
The decision provides an abstract test for the assessment of “genuine use in the Community”. The CTM registration must have been used in relation to the goods and services for which it is registered, used in accordance with its essential function and for the purpose of maintaining or creating a market share within the European Community. Factors to consider when assessing genuine use of a mark are:
- the characteristics of the market concerned,
- the nature of the goods or services protected by the trade mark,
- the territorial extent and scale of the use and
- its frequency and regularity.
It is clear from this that use need not be over an extensive geographical area as this factor is only one of the considerations at play when assessing whether “genuine use in the Community” has been made.
The establishment of this test should provide trade mark proprietors with some guidance when considering the vulnerability of their registrations or the strength of their oppositions under the Regulation.
Contributors: Mary Spears and Lauren Somers