In January 2010 a ruling of the Benelux Office of Intellectual Property (BOIP) threw the debate over what constitutes genuine use of a mark in the European Union onto centre stage. Now Advocate General Sharpston has issued her opinion on the issue, taking the position that use of a Community trademark (CTM) in one member state can constitute genuine use in the Community – but not necessarily.

Leno Merken BV, a Dutch firm of trademark attorneys that owns a CTM registration for ONEL, had opposed Hagelkruis Beheer's application to register OMEL in the Benelux. The BOIP subsequently ruled that the view that "genuine use in one single country by definition results in genuine use in the Community cannot be maintained".

Following the decision, the parties filed a court action to obtain a preliminary ruling from the Court of Justice of the European Union (ECJ), and the Court of Appeals of The Hague referred four questions to the court, seeking clarification on whether Article 15(1) of the Community Trademark Regulation (207/2009) should be interpreted as meaning that use of a CTM within the borders of a single member state is sufficient to constitute genuine use of that trademark and, if not, whether the use of a CTM within a single member state can in any instance qualify as genuine use. In addition, it asked if use of a CTM within a single member state can never be regarded as genuine use within the Community, what requirements apply in respect of the territorial scope of use of a CTM when assessing genuine use in the Community.

Today, the advocate general gave her opinion (Leno Merken BV v Hagelkruis Beheer BV (Case C 149/11)), stating that “use of a CTM within the borders of a single member state is not, of itself, necessarily sufficient to constitute genuine use of that trademark, because the territorial scope of the use is merely one of the factors to take into account in the assessment”. Instead, courts should examine all forms of use of the mark within the internal market, adding that the “borders between member states and the respective sizes of their territories are not pertinent to this inquiry. What matters is the commercial presence of that mark, and consequently that of the goods or services covered by the mark, in the internal market”.

As to the questions, the advocate general concluded:

“Article 15(1) of [Regulation 207/2009] must be interpreted as meaning that (i) use of a CTM within the borders of a single member state is not, of itself, necessarily sufficient to constitute genuine use of that trademark, but (ii) it is possible that, when account is taken of all relevant facts, use of a CTM within an area corresponding with the territory of a single member state will constitute genuine use in the Community.

Genuine use in the Community within the meaning of Article 15(1)… is use that, when account is taken of the particular characteristics of the relevant market, is sufficient to maintain or create market share in that market for the goods and services covered by the CTM.”

Edwards Wildman Palmer’s Gareth Dickson told WTR that today’s opinion was as expected, although he welcomed the articulation of a test for determining genuine use of a CTM (ie, “whether a CTM has been used in one member state or several is irrelevant, what matters is the impact of the use in the internal market: more specifically, whether it is sufficient to maintain or create market share in that market for the goods and services covered by the mark and whether it contributes to a commercially relevant presence of the goods and services in that market”).

Dickson was also pleased with the assertion that use of a mark on a website that is accessible in all of the 27 member states is not by definition genuine use in the Community: “It would be very easy for someone to have a localised physical market for their goods and create a website that technically gives them use in across the community. On one hand you don’t want to give protection to someone because they are local and use a mark on a website, but if you have a highly localised offering this could still be sufficient use because it depends on the specific market.”

Reacting to the opinion, Arnaud Bos, trademark attorney with Onel Trademarks, told WTR: “I believe that, in the event this opinion will be followed by the ECJ, this would mean the end of the policy of OHIM that use in one country is per definition sufficient in order to maintain a European trademark. Furthermore, while use in one country can be sufficient, it still will be more difficult to prove genuine use. I can imagine that use in, for example, Malta of a mass product will not constitute genuine use. The geographical aspect of use will always be questioned in for example opposition procedures.”

However, Dickson concludes that, if followed by the ECJ, there may not be substantial impact on how individual cases are assessed: “From our point of view the expectation will be the same – that substantial use must be assessed on a case-by-case basis. There shouldn’t be a blanket rule and markets do change so I don’t think there will be a big change – the courts will still look for substantive use of a mark in the Community for the goods and services covered by the CTM registration.”