Summary and implications

On 19 December 2012, the Court of Justice of the European Union (CJEU) handed down its long-anticipated judgment in the ONEL/OMEL case. This reference from the Court of Appeal of the Hague 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.

The key points from the decision are that:

  • territorial borders should be disregarded. The boundaries of member states are not a relevant consideration for the purposes of assessing genuine use in the Community; and
  • territorial scope is just one factor in the overall assessment and there is no de minimis rule. Other relevant factors are the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the scale, frequency and regularity of the use.

These points have been reported upon by other IP commentators. However, some aspects of the decision regarding the nature of CTMs suggest to us that there is more to this decision than meets the eye.

Legal background

A CTM which has not been put to genuine use in the Community within five years of the registration date can be revoked on the grounds of non-use.

A joint statement issued by the EU Council and Commission before the CTM system was launched said that use of a CTM in a single member statecould amount to genuine use. However, in ONEL it was argued that allowing a potentially indefinite exclusive right in 27 countries when there is, in fact, only use in one is an abuse of the CTM system. This argument has been rejected.

Back to square one?

The CJEU reiterated that an important factor in the assessment of genuine use is whether the trade mark is being used for the purpose of maintaining or creating market share. An analysis of the relevant market of the goods or services covered by the CTM is therefore necessary.

As in previous cases, the CJEU has avoided setting a clear rule regarding what constitutes genuine use; all relevant factors must be assessed. The clear message from the case is that national borders are not relevant, but in refusing to definitively set out the conditions that must be satisfied, we are, in a sense, back to where we started.

The case makes some suggestion that CTMs are different from national marks in terms of what is expected of their use. We would not be surprised if this aspect of the ONEL decision resurfaces in future cases.