The real deal: the concept of genuine use

As the EU has grown the term ‘use in the Community’ has had to be re-examined. Mariusz Kondrat and Joanna Scholz report on the CJEU’s current thinking.

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."