The long-awaited decision of the Court of Justice of the European Union (CJEU) in Leno Merken BV v. Hagelkruis Beheer BV (ONEL v OMEL) has now been given, questioning how geographically widespread “genuine use” of a community trademark must be to defeat a revocation action on the grounds of non-use. The CJEU’s decision makes it imperative that community trademark owners envisage how and where their trademark will be used.
In the case of ONEL v OMEL, Hagelkruis filed an application in Benelux for the trademark OMEL. In response, Leno, the owner of the community trademark ONEL, opposed the later Benelux trademark application on the grounds that a likelihood of confusion existed given the similarity of the trademarks and the overlapping services of interest.
In response, Hagelkruis argued that since the trademark ONEL had only ever been used in The Netherlands and not throughout the Community that the community trademark registration relied on was open to revocation on the grounds of non-use. In the first instance, the national court of Benelux upheld Hagelkruis’s position because over the last 40 years only The Netherlands had been of commercial interest to Leno.
Following this decision, Leno appealed to the National Court of Appeal, who in turn asked the Court of Justice of the European Union (CJEU) to clarify a number of issues. Prior to the CJEU’s decision, the Attorney General formed the opinion that use in only one member state would not, of itself, be sufficient to constitute “genuine use” of the trademark under challenge throughout the Community. However, it would be possible that, when account was taken of all relevant facts, including characteristics of the relevant market, that use of a community trademark in a single EU Member State would qualify as “genuine use” in the Community.
The CJEU has adopted a Community wide stance that disregards territorial borders between Member States. Hence, the answer to whether a community trademark has been put to genuine use in the Community will turn on whether the community trademark has been used to maintain or create a market for the goods or service covered by the registration. The CJEU also declined to set a “de minimis” threshold for genuine use. Instead, the CJEU made it the ambit of the national courts to assess the sufficiency of the use made of the trademark, against the background commercial conditions and circumstances. For example, it may be the case that a market for particular goods mostly exists in one Member State. This approach tends to suggest that the previously accepted position that use of a community trademark in one Member States was sufficient to maintain it in the face of a non-use revocation action is no longer the case, except where the relevant market is restricted to just one Member State.
In summary, after the relevant market has been identified, the next question to ascertain is whether the use made of the community trademark has been in more than one Member State and if so, whether this use has been for the purpose of creating or maintaining market share for the relevant goods or services. If these questions can be answered in the affirmative, “genuine use” in the Community has probably taken place. If not, community trademarks that have been registered for more than five years, will be more commonly revoked, keeping the community trademark register clearer and ensuing registered rights more potent.
In light of the CJEU’s judgement, if trademark owners foresee that, in fact, use of their trademark will be confined to one or two Member States, it might be prudent to consider the alternative of filing national trademark applications.
If the European market is of commercial interest to you, please discuss your requirements with the experienced trademark team at Albright IP, who can advise you on the best protection strategy for your business. Please contact us using the online enquiry form or telephone our office.