A Dutch court has sent a number of questions to the Court of Justice of the European Union (“ECJ”) concerning the correct definition of ‘genuine use’ under European trade mark law. There has been significant debate in relation to the issue of genuine use following a decision by the Benelux Intellectual Property Office in the Onel case last year.

The Benelux office ruled that the use of a Community Trade Mark (“CTM”) in one EU member State only was not sufficient to show that the mark had been put to ‘genuine use’ within the EU. Consequently, the CTM could not be used to prevent the registration of a similar trade mark. The reasoning behind the decision appears to be that the CTM system was designed to grant European wide protection for trade marks and that a person wishing to register a mark for use in one country should instead apply for a national trade mark.

Prior to this decision the view of OHIM (the official registry of CTMs) was that any form of substantive use of a trade mark, in even one member state, was sufficient to constitute ‘genuine use’. It is hoped that the ECJ has the opportunity to clarify the law in this area in the near future, however in the interim a person wishing to register a trade mark which may or may not have pan-European use should also consider the various options available including applying for a national trade mark and then utilising the OHIM procedures relating to seniority and/or priority.

For further information please contact David Cullen or Leo Moore of our IP Department.