Is use of a trade mark in one country sufficient to establish genuine use?
The Benelux Office for Intellectual Property (BOIP) has recently ruled that use of a Community trade mark (CTM) in a single country of the European Union (EU) is insufficient to constitute “genuine use” of a trade mark within the EU. Under EU law, a CTM can be revoked on the basis of non use if within a five year period the proprietor has not put the CTM to genuine use.
Hagelkruis Beheer B.V. applied to register a CTM for the trade mark OMEL. Leno Merken B.V., the proprietor of an earlier CTM for the trade mark ONEL, filed an opposition to the OMEL application and in support of its opposition was requested to file evidence of genuine use of the mark in the EU. Leno had only used its trade mark in the Netherlands.
The BOIP held that as the EU covers 27 countries, and is likely to expand even further, use in one country did not justify retaining the broad protection provided by a CTM. Therefore the opposition was rejected and the OMEL mark was allowed on the register.
This ruling has been widely criticised as being contrary to the founding principles of the CTM and the aims of developing business in a single market. The Community Trade Mark Office (OHIM) has also issued a press release reaffirming its view that use of a trade mark in a single EU country can be sufficient to constitute genuine use throughout the EU.
The decision of the BOIP has been appealed and therefore it remains to be seen whether the higher level authorities choose to follow this controversial decision.
In the meantime, in light of this decision, trade mark owners will need to carefully consider where their CTM is being used and, wherever possible, should ensure it is used as widely as possible within the EU. Otherwise, they might not be able to rely on it in order to take action against conflicting marks.
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