An analysis of the OMEL/ONEL ruling by the CJEU on 19 December 2012

The OHIM has for several years considered that “genuine use of the trade mark in a single Member State is valid for the Community” (example of the Taxor Cosmetic AG v Caswell S.P.A. ruling on 4 June 2007) 

The CJEU modified this position in a ruling on 19 December.

The important question raised by the OMEL ruling was whether use in a single Member State can be applied to the whole Community.

The LENO Company was the proprietor of the Community word mark ONEL which had been filed in 2002 in Classes 35, 41 and 42.

On 27 July 2009 the HAGELKRUIS Company registered the BENELUX OMEL word mark to design identical and similar products and services.

LENO considered that the OMEL mark created a risk of confusion with its ONEL mark, and lodged an opposition against OMEL.

The defendant then invoked LENO’s loss of rights and requested that LENO provide proof of the use of its Community trade mark. 

In a judgment of 15 January 2010, the BENELUX Office for Intellectual Property (BOIP) rejected the opposition on the grounds that LENO “had not demonstrated genuine use of its ONEL word mark during the 5 years preceding the date of publication of the contested trade mark”. In fact, The BOIP considered that the genuine use of the ONEL mark demonstrated in the Netherlands was not sufficient to constitute use of the mark in the rest of the Community. 

In light of the above, the national court decided to refer a preliminary question to the CJEU so that it may assess the meaning of “genuine use in the Community”, and by extension, whether use in a single Member State can be applied to the whole Community.

“The territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to ‘genuine use in the Community’”

The CJEU does not rule out possibility that use in a single Member State can characterize genuine use in the Community, and indicates “that it cannot be ruled out that, in certain circumstances, the market for the goods or services for which a Community trade mark has been registered is in fact restricted to the territory of a single Member State”.

Nevertheless, it is important to note the phrase “in certain circumstances” employed by the Court as it shows that use in a single Member State does not automatically confer genuine use in the whole Community.

What we see here is a different position to the one adopted by the OHMI.

This nuance was again noted by the Court when it refused to establish a threshold for use to be considered genuine, indicating that “it is impossible to determine, and in the abstract, what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not. A de minimis rule, which would not allow the national court to appraise all the circumstances of the dispute before it, cannot therefore be laid down”.

Moving toward a multifactorial approach of genuine use

Emerging from this case was a multifactorial approach in the assessment of genuine use, as confirmed by the Court, which concluded its decision indicating that assessment of genuine use must take into account “all the relevant facts and circumstances, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the use, as well as its frequency and regularity”.

As an example, the reference market inevitably has an influence on the geographic assessment of genuine use.

Thus, if use in a single Member State with respect to niche markets could be deemed as genuine use, this certainly would not be the case for larger markets.

As with the assessment of the risk of confusion, the assessment of genuine use therefore seems to be subject to a certain number of interdependent factors, which must be assessed on a case-by-case basis.

The use of a trade mark in a single Member State of the Community is therefore not automatically recognized as genuine use in the whole Community.

Key points:

  • Maintaining a trade mark is linked to genuine use
  • The risk of opposition action is an important point to consider as it affects the very existence of a trade mark
  • The OMEL jurisprudence was wrongfully interpreted by certain analysts. If the CJEU invoked the possibility of general use applying to the whole Community, it did so on an exceptional basis and not on the basis of an applicable rule. In fact, the CJEU adheres to the general rule that the assessment of genuine use is based on a multifactorial approach.
  • We cannot predict the impact of the OMEL jurisprudence by the CJEU.

Nevertheless, the holders of Community trade marks must ask themselves the following questions:

  • Is my Community trade mark strong?
  • Should I base my opposition or action on my Community trade mark if it was registered more than 5 years ago and is thus susceptible to a counterclaim for cancellation action for non-use? 

There is a risk that the Community trade mark might be declared null and void if it is used in a single country, since such use could be considered insufficient.

It is therefore important to conduct a study (preferably prior to taking action) in order to determine whether the use of a Community trade mark is impactful enough to be considered valid.

With this in mind, the following points should be examined:

  • Country of use (one or several countries)
  • Analysis of use with respect to the reference market
  • Does the use correspond to the trade mark?
  • Does the use of the name constitute trade mark use?