Genuine use of a CTM - the CJEU in ONEL/OMEL
The Court of Justice of the European Union (CJEU) has today issued its decision in Case C-149/11 (Leno Merken), a.k.a. ONEL /OMEL.
Community Trade Mark practitioners will need no introduction to this highly political and politicised case, in which the question before the Court was, in essence, whether use of a CTM in a single country constituted “genuine use in the Community”.
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| Alex and Luke, not having read the CJEU decision, remain confident that their CTM for "Lemonade" is still bulletproof against challenges of insufficient use within the EU |
Part of the background to this case is a Joint Statement issued by the EU Council and Commission before the CTM system went live. According to that statement, “[t]he Council and the Commission consider that use which is genuine within the meaning of Article 15 in one country constitutes genuine use in the Community”. As an initial point, the Court confirmed its settled case law that it is not bound to interpret Community law in accordance with such a Joint Statement, except if the legislation itself refers to that joint statement, which was not the case here.
To understand the background facts of the (artificial) ONEL/OMEL dispute which gave rise to the CJEU reference, readers are referred to theIPKat’s post earlier this year, which also summarised the Opinion of A-G Sharpston.
The CJEU has largely followed the A-G’s Opinion but has given a different emphasis in its answers to the questions put to it, for which the Court’s answers are as follows:
Article 15(1) of Regulation No 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as meaning that 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’ within the meaning of that provision.
A Community trade mark is put to ‘genuine use’ within the meaning of Article 15(1) of Regulation No 207/2009 when it is used in accordance with its essential function and for the purpose of maintaining or creating market share within the European Community for the goods or services covered by it. It is for the referring court to assess whether the conditions are met in the main proceedings, taking account of 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.
The referring court had attempted to pin the ECJ down with a series of questions, such as (1) whether genuine use at a national scale would automatically satisfy CTM use requirements, or alternatively (2) if use in a single member state on its own could never qualify as genuine CTM use and in the latter case, asked (3) what other criteria applied in assessing genuine use of a CTM.
The fourth question is the one on which the CJEU concentrated. In this question the referring court asked if territorial borders should instead be disregarded, and as we have seen, the CJEU has said this is the correct approach to take.
The CJEU also explicitly declined to lay down a de minimis rule as to how much territorial use will satisfy the use requirement. It also declined to rule on the application of its judgment to the dispute in question, instructing the referring court to decide if the ONEL mark has fulfilled the requirement of genuine use within the Community.
