The real deal: the concept of genuine use

The EU perspective

The interpretation of a trademark’s genuine use in the Community within the meaning of Article 15(1) of the Community Trademark Regulation (CTMR) was the subject of a judgment of the Court of Justice of the European Union (CJEU) in the ONEL/OMEL case (C-149/11) in December 2012.

The concept of the genuine use of a trademark was examined from different perspectives and its various implications for trademark holders was also taken into account. The sole concept of the trademark’s genuine use was designed to reduce the number of exclusively protected marks, as well as preventing possible conflicts between them. Moreover, it also required a demonstration of the real and effective use of the mark for trading purposes.

The decision of the CJEU sparked the debate on how to determine a territorially sufficient genuine use of the CTM, which would satisfy the relevant condition established in Article 15(1) of the CTMR: a proprietor must “put the CTM to genuine use in the Community in connection with the goods or services in respect of which it is registered”.

Based on the traditional interpretation supported predominantly by the Office for Harmonisation in the Internal Market (OHIM), such a requirement may be fulfilled by demonstrating genuine use in only one EU member state, which would result in equal trademark protection in all other member states because of the mark’s unitary character.

This interpretation remained uncontested for many years. In connection with the EU’s continued expansion and territorial differences between member states, however, it began to be criticised as unfair and requiring adjustment in a form which would be more suitable for the considerably larger internal market.

Territorial borders to be disregarded

In the ONEL/OMEL judgment, the CJEU first acknowledged the national and Community systems of trademark protection, and then made several statements that may be deemed as a notable shift in the examined requirements of Article 15(1) of the CTMR’s importance from territorial scope of use, into conformity with the essential function of the trademark— the identification of the origin of goods and services.

The court stated that the territorial scope of trademark use “is not a separate condition for genuine use but one of the factors determining genuine use, which must be included in the overall analysis and examined at the same time as other such factors”.

Consequently, the term ‘in the Community’ is aimed at defining the geographical market, serving as the reference point for any consideration of whether a CTM has been put to genuine use. It was also emphasised that the concept of genuine use was supposed to prevent registrations of trademarks that would not actually be used and in consequence would restrict free movement of goods and services, as well as obstruct competition by limiting the range of signs which can be registered as trademarks.

"The European trademark system encourages the registration of trademarks wider than they currently are used."

Taking this aim into account, the CJEU stated that the territorial borders of the member states should be disregarded in the assessment of ‘genuine use in the Community’ and that such an interpretation may not be undermined inter alia by the opposition guidelines of OHIM, whereas the entire Community should be the reference point while examining the requirement in question.

Significantly, the CJEU ruled out that, in some cases, the market for the goods or services relevant for the registered CTM may actually be restricted to the territory of a single member state and that “in such a case, use of this trademark in that territory might satisfy the conditions both for genuine use of a CTM and for genuine use of a national trademark”.

Subsequently, the court ruled that determining a priori, and in the abstract, what territorial scope should be chosen in order to establish whether the use of the mark is genuine must be assessed as impossible and that it should be left to the discretion of the referring court, which is entitled to carry on that assessment with regard to “all the facts and circumstances relevant to the main proceedings, including the characteristics of the market concerned, the nature of the goods or services protected by the trademark and the territorial extent and the scale of the use as well as its frequency and regularity”.

The European trademark system encourages the registration of trademarks wider than they currently are used. The US system, in contrast, is more preferential for registrations of narrow scope, which are still able to protect a real and factual trademark’s use on the market.

In the EU trademark holders are advised to apply for registrations which would encompass a relatively wide group of goods and services, as the genuine use of the sign is not subject to any official supervision, nor are they obliged to submit evidence of such trademark use. The CJEU’s decision on genuine use only supports this approach.

Mariusz Kondrat is the managing partner of Kondrat IP Law. He can be reached at: mariusz@kondrat.pl

Joanna Scholz is a lawyer at Kondrat IP Law. She can be reached at: joanna.scholz@kondrat.pl