Legal Updates

Intellectual Property – Community Trade Mark – Genuine Use – Article 15 of Regulation 207/2009 – Court of Justice of the European Union

The Court of Justice of the European Union (“CJEU”) recently gave its judgment in the case of Leno Merken BV v. Hagelkruis Beheer BV [2013] ETMR 16, after it was referred from the Court of Appeal of the Hague. In particular, the Court of Appeal had sought guidance on the question of whether use of a Community Trade Mark (“CTM”) in a single member state constitutes “genuine use” in the Community.

Background 

• In July 2009 Hagelkruis (“H”) applied to register as a Benelux trade mark the word mark OMEL in respect of services in Classes 35 (advertising and publicity; business administration; office functions; business management; marketing), 41 (education, courses and training sessions; organisation of seminars and trade shows) and 45 (legal services).
• Leno (“L”) filed an opposition against H’s application to register OMEL.
• L was the proprietor of the Community word mark ONEL, filed on 19 March 2002 and registered on 2 October 2003 for services in Classes 35, 41 and 42.
• L’s argument was that there was a likelihood of confusion on the part of the relevant consumers on account of the similarity of the marks and their identical and/or similar services.
• The Benelux Office for Intellectual Property dismissed L’s opposition on the ground that L had not shown that L had put its trade mark to genuine use during the period of five years preceding the date of publication of the disputed trade mark application.
• L appealed the decision to the Hague which in turn referred the case to the CJEU.

The Issue

The issue was the interpretation of “genuine use” in Article 15 of Regulation 207/2009, particularly the extent of the territorial area that was required for genuine use.

Article 15
Use of Community trade marks

1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.

L had shown that it had put its mark ONEL to genuine use in the Netherlands during the relevant period. However, it had not produced proof of the same in the rest of the Community. If it was deemed that L had failed to demonstrate genuine use in the Community, there was a risk that L’s trade mark would be revoked for non-use.

Decision

The CJEU held that:

• When assessing whether a trade mark has been put to “genuine use in the Community”, the territorial borders of the Member States should be disregarded.
• A Community trade mark is put to “genuine use” within the meaning of art.15(1) of Regulation 207/2009 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. To confirm, a trade mark’s essential function is to guarantee the identity of the origin of the goods or services for which it is registered.
• The territorial scope of the use of the mark is just one factor in the overall assessment of whether that use is genuine. Other factors include:
  • the nature of those goods and/or services protected by the mark;
  • the characteristics of the market; and
  • the scale and frequency of use of the mark.

Outcome

Although the CJEU has not set a definitive rule about what constitutes “genuine use” (only that all the relevant factors should be assessed), it is clear that even if a mark is used in just one Member State, this does not necessarily mean that the mark has not been put to “genuine use in the Community”.

For any queries on trade mark law or other IP law issues, you may contact us by email [email protected]. Visit http://www.rtcoopers.com/practice_intellectualproperty.php

© RT COOPERS, 2013. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.