An advisor to the Court of Justice of the European Union (CJUE) has delivered an opinion on whether use of a Community Trade Mark (CTM) in one member state may be considered to be “genuine use”. Where a CTM is not put to genuine use in the five years following the date of registration (or any later five year period), it can be revoked.
The opinion was delivered in a case relating to a CTM registration for ONEL that had only ever been used in the Netherlands. When a company attempted to register the word OMEL as a Benelux trade mark, registration was opposed by the owner of the ONEL mark. This opposition was rejected by the Benelux Office for Intellectual Property on the basis that ONEL could not be said to have had genuine use throughout the EU, as it had only been used in the Netherlands.
This decision was ultimately referred to the CJEU, the judgment of which is awaited. An advisor to the Court, known as an Advocate General, has however issued an opinion on the case. While the opinions of Advocate Generals are not binding on the Court, they are often followed.
The Advocate General considered that national borders should not be relevant. Instead, it is the market in which the trade mark operates that is important and the characteristics of such a market will vary depending on the goods or services to which the mark relates. It is the use of the trade mark within this market which will indicates whether genuine use is being made across the EU rather than merely within one country. He concluded that use of a CTM within one member state could constitute genuine use even if, due to the particular characteristics of the relevant market, the territory in which such use occurs happens to correspond with the territory of a member state.
By way of example, consider the market for the sale of hurleys. The predominant market is likely to be Ireland. However, there may be limited sales across the EU and so a national trade mark would not provide sufficient protection. According to the opinion of the Advocate General, the fact that sales are largely only within Ireland should not prevent a finding of genuine use for CTM purposes.
The opinion of the Advocate General reflects the reality that that the EU market for goods may sometimes be confined to a single member state.
Contributed by: David Cullen
