The Court of Justice of the EU has ruled that, where a European
Community Trade Mark ("CTM") is only used in a single EU
country, the trade mark owner may still be able to establish
"genuine use" of that ctM in the EU. CTMs which have not,
within five years of registration, been put to "genuine
use" in the EU in connection with the goods or services in
respect of which they are registered may be subject to
Hagelkruis Beheer applied for a Benelux registration for the
word mark OMEL. Leno Merken, owner of a Community word mark ONEL
for two of the same classes, opposed the registration. In response,
Hagelkruis requested that Leno provide proof of use of the ONEL
mark. Leno had proved use of the earlier mark ONEL in the
Netherlands, but not in the rest of the EU.
The Court rejected an arbitrary rule on territorial scope of
genuine use, stating territorial borders should be disregarded.
The Court concluded that an assessment of genuine use should
take account of "all relevant facts and circumstances".
These include the characteristics of the market concerned, the
nature of the goods or services protected by the mark, and the
territorial extent, scale and frequency of use.
Brand owners who have taken the trouble to register a CTM must
ensure they have a strategy in place to maintain it, through
genuine EU use on a sufficient scale.
This publication is intended as a general overview and
discussion of the subjects dealt with. It is not intended to be,
and should not used as, a substitute for taking legal advice in any
specific situation. DLA Piper Australia will accept no
responsibility for any actions taken or not taken on the basis of
DLA Piper Australia is part of DLA Piper, a global law firm,
operating through various separate and distinct legal entities. For
further information, please refer to www.dlapiper.com
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