Author: Eddie Powell
You’ve done it. You’ve successfully registered your UK or European Community Trade Mark (CTM) and then…you forget about it? After all the heartbreak of registering your CTM you must remember to use it! This is particularly an issue in the event that a third party seeks to register a trade mark which is similar or identical to your own trade mark. Under the Community Trade Mark Regulation (CTMR), an owner of a CTM must within a period of five years following registration “put the CTM to genuine use in the Community in connection with the goods or services in respect of which it is registered” otherwise the mark may be revoked on the grounds of non use. Similar rules apply for UK National Registries.
The issue of what is “genuine use” was referred to the European Court of Justice (ECJ) by a Dutch court. The Dutch courts faced an opposition by Leno Merken BV (Leno) to an application by Hagel Kruis Beheer BV (Hagel) who wished to register the word “OMEL” as a Benelux trade mark. In response Hagel asked for proof of genuine use of Leno’s earlier CTM “ONEL”. Leno provided proof of use of “ONEL” in the Netherlands only. The matter was referred to the ECJ in Hague.
During the proceedings the parties agreed that the marks were similar and that the goods involved in the application and the earlier registration were similar. They agreed that this gave rise to a likelihood of confusion. The parties further agreed that Leno had shown genuine use in the Netherlands. Where the parties disagreed was whether Leno was required to show genuine use of “ONEL” in more than one EU member state. The ECJ was asked to determine whether use of the CTM in just one EU member country was sufficient to qualify as “genuine use” of the mark.
In her preliminary opinion, the ECJ’s Advocate General Sharpston considered that, when determining genuine use in the Community, the national court should consider all forms of the use of the mark within all 27 member states. It was important to consider the commercial presence of the relevant mark and, consequently, the value of the goods or services covered by the CTM, i.e. was the use of the CTM sufficient to maintain or create a market share for those goods and/or services protected by the CTM. For these reasons the Advocate General considered that use in a single member state did not necessarily preclude the use of the mark from being genuine within the meaning of the relevant regulations. Interestingly, the Advocate General was very careful also to specifically state that use of the mark on a website that was accessible across the whole of the EU did not by definition constitute genuine use in the EU.
If the Advocate General’s opinion is followed (which it usually is) it is clear that the geographical location of the use of the mark is only one of the factors that a court will take into account when assessing whether use is genuine.
Bearing this decision in mind you must carefully consider whether or not a national or a community trade mark is suitable for your business purposes. When you do obtain a CTM you should try to make use of your trade mark across as many member states of the EU as possible (obviously within reason and insofar as it is relevant to your business).