Legal alert

Genuine use of a Community trademark in one EU country can be sufficient

December 20, 2012
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Legal alert

In Leno v Hagelkruis (C‑149/11) (ONEL/OMEL) the Court of Justice of the European Union (the “CJ”) was asked to decide whether it is sufficient to use a Community trademark ‘genuinely’ in the territory of a single Member State only to satisfy the ‘genuine use’ condition in article 15(1) of the Community Trademark Regulation (the “CTMR”).

On 19 December 2012 the CJ ruled 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’”. Territorial scope is just one of the factors to determine genuine use. It is for national courts to assess whether use of a Community mark is genuine (i.e. no token use) “taking account of all the relevant facts and circumstances, including:

  • the characteristics of the market concerned;
  • the nature of the goods or services protected by the trade mark;
  • the territorial extent;
  • the scale of the use as well as
  • its frequency and regularity”.

 

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