In Article 15 in the Council Regulation it is stated that a CTM has to be put into use in the Community within a five-year period following the registration. If it is not put into use during this time, it can be subject to revocation. The question at stake was whether the use of a Community Trademark (CTM) only in one member state is enough to avoid cancellation for non-use.
The CJEU rules that it may be enough with one member state but that it depends on the specific situation and that whether or not a market share has been created or maintained is of key importance for decisions relating to “genuine use”.
In 2009 the company Hagelkruis Beheer filed an application to register Omel as a Benelux trademark. Leno Merken, the owner of the Community trademark registration Onel, since 2003, then opposed as their trademark covers similar services in partly the same classes.
Hagelkruis Beheer argued that the opponent’s use of Onel was restricted to the Netherlands and that it was insufficient in order to be considered as genuine use for a CTM and requested that Leno Merken should prove genuine use of its trademark within the Community.
The Benelux Office for Intellectual Property agreed with Hagelkruis. Leno then appealed to the Regional Court of Appeal in The Hague who later referred some questions to the Court of Justice of the European Union (CJEU).
CJEU’s decision is in line with the Advocate General’s opinion from July 2012 and rules that territorial boarders within the EU member states should be disregarded when assessing whether a trademark has been put to genuine use in the Community. The more important question and key consideration is whether the trademark is used for the purpose of maintaining or creating market shares within the European Community for the goods and services covered by the trademark.
A concrete example
When assessing the “genuine use” one must consider if a real commercial exploration of the trademark has been made. For example if the use of a trademark for a certain product or service is restricted to one country that, on the other hand, is prominent within a certain market sector to which the trademark is related, it can be regarded as sufficient “genuine use”. For example a trademark covering meatballs, only used in Sweden is prominent within that market sector.
Possibility to convert CTMs to national trademarks
In a dispute, if genuine use is not demonstrated for a CTM , it is possible to convert it into one or several national registrations in the member state/-s where genuine use has been proven.
If you have questions regarding this or want to avoid the risk for others to claim non-use, we recommend you to contact any of our trademark consultants who can advise you on what to do.