Obligation to genuinely use a trademark

EU-wide protected Community Trademarks (as well as national trademarks) have to be used for the claimed goods and services in the course of trade within the EU in order to maintain their protection and enforceability. A (partial) lack of use, however, does not automatically result in a (partial) lapse of the trademark registration. On the other hand, after an initial “grace period” of 5 years beginning with the registration of the trademark, genuine use of the trademark would have to be proven when enforcing such trademark against third parties; furthermore, anybody could request revocation of such trademark in so far as it had not been genuinely used for goods and services covered by the registration (Art 15, 51(1)(a) CTMR).

Previous situation

Until recently, it was commonly held that genuine use of a Community Trademark in only one single member state was sufficient for genuine use of the trademark within the EU.

New principles of assessment following recent case-law

In a recent preliminary ruling which is binding for all EU-member states (case C- 149/11 of December 19, 2012), the Court of Justice of the European Union did not follow this former common opinion. The CJEU now requires an individual assessment aiming at the entire Common Market (i.e. the entire EU).

The Court of Justice of the European Union particularly held that 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.”

According to the judgment, 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. Whether these conditions are met would have to be assessed on a case-by-case basis, taking account of 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.

Conclusions

This stance leads to a considerable legal uncertainty, as it will only follow from caseby- case decisions within the next years what exactly will be required for genuine use in the EU. If disputed genuine use of a Community Trademark in the EU could not be proven, the Community Trademark would have to be converted into national trademarks of those member states in which the trademark had indeed been genuinely used (Art 112 CTMR).

In case use in the EU is intended, it seems to be advisable to ensure that advertising and marketing of the goods and services designated with the trademark verifiably aims at a larger territory within the EU, respectively that at least respective information is accessible (e.g. through advertising on a website, possibly also in foreign language versions) and that this is properly documented.