In order to be able to continue to enforce one’s Community trademark rights, within a period of five years after registration, the trademark owner needs to put the Community trademark to "genuine use in the Community" in connection with the goods or services (art. 15 para. 1 of the Community Trade Mark Regulation (CTMR)). If the trademark owner has not put it to genuine use in the Community, there is a risk that the trademark will be revoked by an application for revocation by a third party (art. 56, 51 para. 1 (a), CTMR), or a third party may put forward a defence of non-use in a proceeding regarding the trademark (art. 99 para. 3, CTMR).
The Court of Justice of the EU (CJEU) has already dealt several times with the interpretation of the term "genuine use," in particular in the judgments Ansul (decision of March 11, 2003, case C-40/ 01 – Ansul BV/Ajax Brandbeveiliging BV) and Sunrider/ OHIM (decision of May 11, 2006, case C-416/04 – The Sunrider Corp./OHIM), as well as in La Mer Technology (order of January 27, 2004, case C-259/01 – La Mer Technology Inc./Laboratoires Goemar SA). The CJEU is of the opinion that a trademark is put to "genuine use" if the trademark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. It is not enough in this respect that the trademark is only used for the sole purpose of preserving the rights conferred by the trademark. Whether there is genuine use in this sense needs to be assessed by taking into account all facts and circumstances relevant to establishing whether there is real commercial exploitation of the trademark in the course of trade. One factor is also the territorial scope of the trademark’s use.
Consequently, one then needs to decipher to what amount the trademark needs to be used to be considered to be put to "genuine use in the Community." Is it enough that the trademark is used in a single member state, or should the territorial borders of a member state be disregarded in the assessment? The former view seems to be supported by the previous case law of the CJEU (CJEU, decision of September 14, 1999, C-375/97, General Motors; decision of November 22, 2007, C-328/06, Nieto Nuno; decision of October 6, 2009, C-301-07, PAGO International). However, the recent CJEU ONEL/OMEL decision (decision of December 19, 2012, case C-149/11 Leno Merken BV/Hagelkruis Beheer BV) makes it clear that the earlier case law only relates to the interpretation of the provisions regarding the protection of well-known Community trademarks, but not to the requirement of genuine use in the sense of article 15 para. 1, CTMR. In this decision the CJEU states that the 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" within the meaning of that provision. A Community trademark is put to genuine use within the meaning of article 15 para. 1 of CTMR when it is used in accordance with its central function and for the purpose of maintaining or creating market share within the European Community.
The CJEU bases its opinion on article 1 para. 2, CTMR in connection with the third recital of the CTMR. From this provision it follows that the purpose and the objective of the Community trademark is to remove the barrier of territoriality of the rights conferred on proprietors of trademarks, by the laws of the member states. The Community trademark thus enables its proprietor to distinguish his goods and services by identical means throughout the entire Community, regardless of frontiers. The CTMR shall lead to similar conditions as those of the national markets. The CJEU took the view that such objectives would be blocked and it would interfere with the unitary character of the Community trademark if territorial borders of the Community trademarks would be given a particular significance in the Community Trademark Regulation. It is therefore impossible to establish what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not. It is for the referring court to assess whether the requirements are fulfilled. In this respect, it cannot be ruled out that, in certain circumstances, the market for the goods and services for which a Community trademark has been registered is in fact restricted to the territory of a single member state. In such a case, use of the Community trademark in that territory may satisfy the conditions both for genuine use of the Community trademark, and for genuine use of a national trademark.
Hence, the CJEU steered a middle course. The Court made sure that on the one hand national trademarks do not become less important due to low requirements with respect to genuine use of Community trademarks, and on the other hand that Community trademarks do not become unattractive due to unnecessary high requirements with respect to genuine use.