European Court of Justice, Decision of 19 December 2012, No. C-149/11, Leno Merken BV v. Hagelkruis Beheer BV

In order to remain valid, Community trademarks must be used "in the Community". The European Court of Justice (CJEU) has confirmed that, in principle, a Community trademark can be maintained through use in a single Member State.

The CJEU held 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".

What matters is that the use is genuine, i.e. that it is sufficient to create or maintain a market share in the relevant market for the goods and services covered by the Community trademark. Country borders within the Internal Market are largely irrelevant to this assessment although cross-border use can of course be taken into account in favor of the Community trademark owner when use evidence otherwise is scarce.

This judgment is in line with the recommendations given by Advocate General Sharpston[1] and the CJEU's previous ruling in "PAGO" (No. C-301/07)[2], where the CJEU had confirmed that a Community trademark that has a reputation in a single Member State can be considered as having a reputation "in the Community".

Whilst the court does not agree that such a parallel can be drawn, it does agree "the Community", from the perspective of the Community Trademark Regulation, is, in principle, a single undivided territory, rather than a conglomerate of (currently) 27 countries. As such, whether use of a Community trademark is genuine is not so much a question of "where" (except that use must have been within the EU of course) but primarily of "what and how much".

The judgment also confirms the consistent practice of OHIM, shared by most national offices and trademark courts in the EU. In this respect, concerns on the part of Community trademark owners that their Community trademarks may be harder to maintain than national marks should have been put to rest. Community trademarks have once again been confirmed to be (at least) fully equivalent to national marks.