Court of Justice of the European Union (CJEU) ONEL/OMEL case

Main question in this case was whether the use of a community trademark (CTM) in just one EU member state is sufficient to maintain the rights in the CTM registration where such registration is challenged on the basis of non-use. In its judgment, the CJEU decided that the territorial borders of the member states should be disregarded in the assessment of whether a trademark has been put to ‘genuine use in the community’ within the meaning of Art. 15 (1) CTMR. According to the CJEU, where the market for the goods or services for the CTM has been registered is in fact limited to the territory of a single member state, it cannot be ruled out that use of the CTM on that territory might ‘in certain circumstances’ satisfy the conditions for genuine use both of a CTM and of a national trademark. However, it is for the national courts to assess the market circumstances. The decision shows that the unitary character of the CTM does not necessarily dictate EU-wide use. However, use in only a single member state of the EU will also not by definition be sufficient to maintain the rights to a CTM. On the basis of the characteristics of the product or services in question and the corresponding market, use of a particular CTM in only one member state may qualify as ‘genuine use’. Therefore, when assessing whether or not the owner of a CTM can rely on the protection granted by a CTM registration, the owner of that registration will have to take into account the actual market for the product or service for which the CTM is used, and cannot simply rely on the doctrine that use in one member state will be sufficient.