A few weeks ago we reported on the ONEL v. OMEL case pending before the Court of Appeal in The Hague. It concerns the topical question whether or not use of a Community Trade Mark in one member state suffices for genuine use thereof. The Benelux Office for Intellectual Property decided that use in one member state is not sufficient. The Court proposed to refer the case to the Court of Justice in Luxemburg and on February 1 the Court referred the following final questions to the CJ.
- Should Article 15(1) of Regulation (EC) no. 207/2009 on the Community Trade Mark be interpreted in such a manner that it is sufficient, in order to qualify as genuine use of a Community trade mark, for that trade mark to be used within the frontiers of a single Member State, provided that this use, if it concerned a national trade mark, would qualify as genuine use in that Member State (cf. Joint Statement no. 10 on Article 15 of Council Regulation (EC) no. 40/94 dated 20 December 1993 and the OHIM’s Opposition Guidelines)?
- If Question 1 is to be answered in the negative, does such use of a Community trade mark within a single Member State as described above not in any instance qualify as genuine use in the Community as defined in Article 15(1) of Regulation (EC) no. 207/2009?
- If use of a Community trade mark within a single Member State does not in any instance qualify as genuine use in the Community, to what requirements – in addition to other factors – should the territorial scope of the use of a Community trade mark be subject for purposes of determining genuine use in the Community?
- Alternatively, should – in deviation from the assumption used above – Article 15 of the Council Regulation on the Community Trade Mark be interpreted in such a manner that determination of genuine use in the Community is made wholly independent from the frontiers of the Member States’ respective territories (and for example market shares (product/geographic markets) be taken as a point of reference)?