LENO MERKEN BV VERSUS HAGELKRUIS BEHEER BV
Court of Justice of the European Union, Second Chamber, 19 December 2012:
- Parties: Leno Merken BV v. Hagelkruis Beheer BV
- Subject: Genuine use of a trade mark
- Trade marks: ONEL and OMEL
Leno is the proprietor of the ONEL Community trade mark for services in Classes 35, 41 and 42.
Further to Hagelkruis's registration of the OMEL trade mark at the Benelux Office in Classes 35, 41 and 42, the company filed an opposition. Hagelkruis responded to this opposition asking for the production of proof of the use of the ONEL trade mark in the European Union.
The Benelux Office for Intellectual Property rejected the opposition based on the ONEL Community trade mark, the use of which was only demonstrated in the Netherlands, finding that the geographic scope of this use was not sufficient.
The owner of the Community trade mark appealed this decision before the appeal court, which asked the CJEU in the framework of a preliminary ruling, to rule on the relevance of the consideration of territorial borders in assessing the genuine use of a trade mark.
The Court stated as follows: "Article 15(1) of Regulation No 207/2009 must be interpreted as meaning that the territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to ‘genuine use in the Community’ within the meaning of that provision."
It added that the genuine nature of the use of a Community trade mark will be found when it is used to maintain or create market share within the Community for the goods and services covered by said trade mark, based on elements such as: "characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the use as well as its frequency and regularity".
Therefore, in assessing the genuine use of a Community trade mark, it is now accepted that a series of conditions specific to each case must be considered, which presupposes ignoring territorial borders, use in a single Member State of the Community not being sufficient to characterise the existence of a genuine use.