On 15 January 2010, the Benelux Office for Intellectual Property ("BOIP") rendered a noteworthy judgment in which it ruled that the use of a Community Trade Mark ("CTM") in one country is not sufficient to constitute genuine use of such a trade mark in the European Community within the meaning of Article 15 of the Community Trade Mark Regulation ("CTMR") (Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark).

This decision can cause problems for owners of CTMs that are used solely in one country of the Community. Such owners could be faced with the situation that after five years of use in one country, their CTM can be revoked because the BOIP perceives such use as not constituting genuine use.

This judgment is particularly likely to have a huge impact for enterprises that are active locally and have registered a CTM which they use only in one country of the Community.

It can be argued that the BOIP is implicitly also stating that a Benelux trade mark is not genuinely used if it is used in solely one Benelux country. Accordingly, such Benelux trade marks could also be in danger after five years because the BOIP could perceive the use of such trade marks in one country or province as non-use in the Benelux.

The facts

On 27 July 2009, Hagelkruis Beheer B.V. (the "Defendant") applied for the registration of the CTM OMEL at the Benelux Office for Intellectual Property ("BOIP") for goods and services in classes 35, 41 and 45. The application was published on 29 July 2009.

The Defendant planned to use the trade mark OMEL in Norway and Sweden, and possibly in other Scandinavian countries as well. The registration of the CTM was intended solely to serve as a basis for an international filing (under the Madrid Protocol).

Leno Merken B.V. (the "Opponent") was the owner of the older CTM ONEL, applied for on 19 March 2002 and registered on 2 October 2003 for goods and services in classes 35, 41 and 42. The Opponent ran a trade mark attorneys firm (which had been in practice for over 40 years) in the Netherlands, offering its services under the trade mark ONEL. The Opponent's services were directed particularly at Dutch medium-sized enterprises.

Arguments of the parties

On 18 August 2009 the Opponent lodged an opposition against the registration of the trade mark OMEL based on Articles 2.14(1)(a) and 2.3(b) of the Benelux Convention on Intellectual Property ("BCIP").

Genuine use

The Opponent was asked to provide evidence of genuine use of the trade mark ONEL. It was undisputed that this trade mark had been genuinely used in the Netherlands by the Opponent. However the Defendant argued that use of the trade mark in one country was not sufficient to constitute genuine use within the meaning of Article 15 CTMR, whereas the Opponent argued that such use was sufficient. The Opponent based its opinion on the Joint Statements of the European Commission and the European Council in relation to the CTMR. The Opponent also argued that the CTM system had always been promoted as a flexible system in terms of the extent of geographical use and that this was one of its strong features: by proving use of a CTM in one country, the owner obtains protection in a large territory and can retain this protection by meeting relatively low requirements.

Given that the parties were in agreement that the CTM ONEL had been used in the Netherlands, the Opponent requested the BOIP to rule that that trade mark had been genuinely used within the Community and to reject the Defendant's application for registration of the trade mark OMEL. The Defendant emphasised that the two trade marks would not be used in the same territories. In addition, it stated that it totally disagreed with the Opponent's arguments that use of a CTM in one country should suffice to preserve that trade mark. In the Defendant's view, the CTMR requires use "within the Community", which is not the same as use "in one member state".

Decision of the BOIP

The BOIP ruled that based on ECJ case law, explanatory notes such as the Joint Statements are not legally binding (ECJ, Antonissen, C-292/89, 26 February 1991). Furthermore, it stated that the findings in the Joint Statements were legally challengeable and were at odds with the second, third and sixth recitals to the CTMR.

The BOIP pointed out that it would lead to undesirable results if the territory of the Community was put on the same level as one member state. The EU had expanded to include 27 member states – a huge territory with a total population of over 500 million – and was expected to expand even further. The BOIP stated that, in view of this, use in only one country does not justify the broad protection provided by a CTM.

To justify the exclusive right of a CTM, the trade mark in question must be genuinely used. An exclusive right that reaches far beyond (or in any event beyond) the territory in which the trade mark is actually used would result in barriers to the free movement of goods and services within the internal market.

Conclusion

The BOIP concluded that use of a trade mark in one country is not sufficient for the requirement of genuine use within the meaning of Article 15 CTMR. The BOIP therefore ruled that the opposition was rejected and that the trade mark OMEL would be entered in the trade marks register.

The European Court of Justice has not yet had an opportunity to rule on this issue, but we can expect a decision along similar lines as those discussed above. CTM owners will have to carefully check where their trade mark is being used before opposing later applications.